Following up on Prashant’s detailed coverage of certain commercial associations making representations to the US Trade Representative on its Special 301 Report, I looked into the representations made by prominent software and internet industry associations. Below, I summarise the India-specific recommendations of the following bodies – the Business Software Alliance (BSA), Internet Association and the International Intellectual Property Association (IIPA).

India Continues to be a ‘Piracy Priority’ for the Special 301 Lobbies

The business associations had little love for India in their submissions, with the BSA and IIPA specifically calling for India to continue to be on the ‘priority watch list’ in the USTR’s Special 301 Report, due to come out later this year, citing the unlicensed use of software and ‘piracy’ as major concerns.

While the inclusion does not by itself trigger any retaliation or statutory action affecting US-India Trade, countries in this category are subject to increased scrutiny and possible retaliatory trade action if found to be in breach of international agreements. The threat of retaliatory action is intended to force foreign jurisdictions to rectify identified deficiencies in their legal regimes. If the recommendations of these trade bodies are accepted, India would be on the Priority Watch List for the 28^th year running.

Impending Internet Regulations Loom Large

A major fear across the submissions was the impending Personal Data Protection Bill. Nominally framed as a measure to increase privacy and data security, the submissions pointed out some aspects of the Bill which could affect cross-border data flow of internet businesses (and members of the alliances). The BSA specifically took issue with the PDP Bill’s data localisation categories as well as the RBI’s payment data storage regulations, while the Internet Association pointed out the possible expropriation of protected IP under the PDP Bill’s scheme for acquisition of ‘non-personal data’ for government use. The BSA was also concerned about India’s trade policy efforts at securing better deals on the taxation of digital products and the DPIIT’s Make In India procurement policies prioritising domestic software and hardware manufacturers.

The Internet Association additionally identified concerns relating to intermediary liability protections in India, however, it wrongly stated the present law by claiming that intermediaries were required to remove copyrighted information within 36 hours of a person notifying the intermediary. This is contrary to the present law which requires a government or judicial order for removal of any content.

BSA Lobbies for Stronger Patent Protections for Software

The BSA, in particular, expended significant effort deliberating on India’s patent regimes. It praised the Computer Related Inventions Guidelines, 2017 (which were recently invoked by the Delhi High Court) for expanding the scope of protection of software patents in India. Additionally, it claimed that its members would find it ‘impracticable’ to comply with the patent working requirements under the Patents Act under Form 27.

Overall, it appears that the digital industry bodies are not ecstatic about India’s proposed revamps to its data and internet governance regimes, with the focus for this year shifting to specific data governance concerns over the larger, more regular efforts and attempts to counter ‘piracy’ in India.

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In light of the COVID-19 related advisories (see all, here) from the Ministry of Health and Family Welfare, the Controller General of Patents, Design and Trade Marks, has issued the following notification today:

Public Notice- Adjournment of hearings related to trademark scheduled between 17/03/2020 to 15/04/2020

“In view of advisory issued by Ministry of Health and Family Welfare, Govt. of India and the
concerned raised by stakeholders in this regard, all hearings relating to trademarks matters scheduled between 17/03/2020 to 15/04/2020 have been adjourned and these cases will be rescheduled in due course of time.
It may further be noted that hearing scheduled after 15 April, 2020 will remain as it is.”

On 13th March, the IPAB has also posted a similar notice:

“In view of the travel advisory issued by the Ministry of Health & Family Welfare,
Govt. of India, Hon’ble Chairman directed to reschedule the hearing fixed on 16.03.2020
& 17.03.2020 at Chennai. Accordingly the cases listed on 16.03.2020 are reposted to
07.04.2020 & cases listed on 17.03.2020 are reposted to 08.04.2020. For further details
please visit our Website https://www.ipab.gov.in “

On March 10th, the Registrar of Trade Marks and GIs had also put out a notification that Opposition cases fixed for 12/03/2020 have been adjourned to 30/03/2020 due to administrative reasons.

How Courts are handling it: 

Meanwhile, the Supreme Court has limited its functioning, and also taken other precautions such as thermal screening and hand sanitiser stations (see here for the Supreme Court’s circular, and here for LiveLaw’s report). The SC also is taking measures to reduce the ‘people to people’ contact, by introducing video conferencing for court proceedings, e-filings, etc. See more in LiveLaw’s report here.

Several High Courts including the Delhi High Court, the Bombay High Court , the High Court of Karnataka, have also put out notices regarding the restricted functioning they will proceed with for now.

As we’d informed our readers last year, the Franklin Pierce Center for Intellectual Property at the University of New Hampshire School of Law (UNH) and Royzz & Co. (erstwhile Solomon & Roy) have partnered to offer a scholarship for prospective international LL.M. students specialising in IP Law. The scholarship applications for the upcoming academic year are due by April 1, 2020. For further details, please read the post below where the recipient of the scholarship for the current academic year writes about the LL.M. programme at UNH School of Law.

Royzz & Co. Scholarship Recipient on Life at Franklin Pierce  

Mohak Rana & Talbot Eckweiler*

Mohak Rana received Royzz & Co.’s first-ever International Student Scholarship for international students admitted to UNH Law’s Intellectual Property (IP) graduate program. Learn more about earning an LL.M. at a Top 5 IP law school! 

Hello and welcome to my journey!

I grew up in the holy town of Haridwar and earned my B.B.A. LL.B. at NMIMS, Mumbai. In 2018, I decided to take the next step in my career. Thanks to the financial support I received at Royzz & Co. that allowed me to pursue my LLM, I’m well-positioned to become an intellectual property rights (IPR) attorney.

Indian Ingenuity and American Experience   

An LLM degree in America can be expensive. It is a serious commitment of time, money, and personal effort. However, scholarships can help offset the costs, and a great education can lead to an exceptional career.

I wanted to study Intellectual Property (IP) because it’s a rapidly developing field in India. Tech startups in India raised a record $11.3 billion this year, and those companies need lawyers to protect and guide their businesses.

India’s startup spirit is strong, and the United States has been a world leader in the IP industry for decades. I wanted to combine the best practices of existing IP law with the new opportunities at home.

An International Name and Global Alumni Network

I did my research and found the perfect fit: University of New Hampshire Franklin Pierce School of Law. U.S. News and World report has ranked Franklin Pierce in the top 10 for IP since the rankings began nearly 30 years ago. The school currently ranks #5, standing strong with institutions like Stanford, Berkeley, George Washington, and New York University.

Franklin Pierce offers many advantages for someone like me. It has the largest IP library in the Western Hemisphere, an expansive list of IP courses, and an IP faculty comprised of world-renowned scholars.

Additionally, the school’s alumni work in more than 80 countries, many of them in India. Those alumni include:

• Mahua Roy Chowdhury, founder and principal partner of Royzz & Co.
• Sumeet Mailk, Director of Eastern Book Company (EBC) Group
• K.C. Kankanala, Managing Partner and Chief IP attorney at BananaIP

I quickly learned that the name Franklin Pierce carries a lot of weight in the IP field, and I am proud to be associated with this globally-respected institution.

A New Home in New Hampshire

I was thrilled to learn Franklin Pierce also offers a wide range of opportunities for learning outside of the classroom. I have actively participated in various lectures and forums organized by student groups, faculty and centers at the school. These activities help me build my network while I continue learning.

I discovered that Franklin Pierce’s community is about more than academic excellence – people here genuinely come together for social activities. Student groups include the outdoors club, sports club, Student Body Association (SBA), Law Review, sports and entertainment law club, fashion club, and volunteer community engagement programs like ‘Teen Court’ and ‘You be the Lawyer.’

As a Non-JD Governor of SBA and a Teen Court Mentor, I engage in constant decision making and planning processes. The school truly respects every culture, ethnicity, and race. We as a law school family come together to celebrate what matters to each individual. This fall, UNH celebrated Diwali at all its campuses. Even though it was not quite like the celebrations at home, UNH made sure that I did not miss home during the festival.

Franklin Pierce has offered me a holistic higher education experience filled with co-curriculars, community engagement, and cross-cultural inclusivity.

A Cost-Effective Investment in My Future 

Franklin Pierce strives to make its high-quality education accessible and affordable. The school offers substantial scholarships based on both merit and financial need – in addition to the International Student Scholarship offered by Royzz & Co.

I was thrilled to find a comfortable, affordable place to live while I complete my studies. New Hampshire is the #2 state to live, and it offers a substantially lower cost of living than places like California, New York, Singapore or Hong Kong.

Even though New Hampshire is peaceful and affordable, Franklin Pierce’s campus is a short drive to other major U.S. cities – Boston, Massachusetts is only an hour’s drive away!

The school’s generous scholarship packages, coupled with Concord, New Hampshire’s low cost of living and convenient location, makes the school one of the most cost-effective options for an LLM degree in the United States.

 Are You Ready to Join Me?

I am earning a cost-effective degree at one of the top IP law schools in the world, and I’m having fun while doing it!

I am only halfway into my LLM program, but I have already made amazing memories. I regularly receive dinner and party invitations from fellow students, clubs, and faculty. When things are quiet, I enjoy New Hampshire’s beautiful landscape by going for a hike and connecting with nature. When I meet with IP professionals, they are excited to connect with me, because they respect the Franklin Pierce name, or they are graduates of the school.

If you are ready to become a part of the school that is setting the pace for legal education in the information age, then apply today! Franklin Pierce is currently accepting applications for Fall 2020.

I also encourage you to apply for the Royzz & Co. International Student Scholarship. Once you complete your application to an LLM or Master’s program in IP, you can request an application for the International Student Scholarship, contact admissions@law.unh.edu. Scholarship applications are due by April 1, 2020.

For more information on Franklin Pierce’s graduate law degrees, the application process or the International Student Scholarship sponsored by Royzz & Co., reach out to me on WhatsApp at +1-603-513-5300. You can also visit the school’s Graduate Admissions web page.

*Mohak Rana is an LLM in Intellectual Property candidate at UNH, and Talbot Eckweiler is the Assistant Director of Admissions, UNH Franklin Pierce School of Law.

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We’re pleased to bring to you a post by our Fellowship applicant, Lokesh Vyas, on the rights of film directors (or rather the absence of them) under Indian copyright law. Lokesh is a 4th year student at Institute of Law, Nirma University, Ahmedabad. This is his first submission for the Fellowship.

Directors’ Plight without (Copy)Right: ‘Mr. India’ Trilogy Runs Into Trouble

Lokesh Vyas

The Copyright Act, 1957 recognizes three stakeholders in a movie namely; producers, authors of underlying works (such as the script writer) and performers (such as the actors). It doesn’t recognise the contribution of directors and confer any rights upon them. A recent controversy over the proposed trilogy based on the iconic film Mr. India has revived the debate over directors’ rights in India. Shekhar Kapoor, the director of the film, who was not consulted on the same, has questioned if the directors have no creative rights over their films. He wishes to fight for the director’s rights, in the same way Javed Akhtar fought for the rights of writers. When asked if the producer of the film, Boney Kapoor has given away the rights of Mr India to the Zee group, he commented: “It’s not his to give away. Boney has the rights of Mr India, not its sequel or any other spinoffs”.

The issue of directors’ rights is not a novel one in India and was raised before when the Copyright Amendment Bill 2010 had proposed to make the principal director a joint author and copyright owner of a cinematographic film along with the producer.

Producer as the sole author and copyright owner in a cinematographic film

Under Section 2(d)(v) of the Copyright Act, 1957 (‘Act’), a producer is the sole author of a cinematographic film. The director of the film is not considered as its author (or the joint author). Accordingly, being the sole author, the producer is also the sole (first) owner of copyright in the film under Section 17 of the Act. The director does not own copyright in the film. The rationale for the same can be gathered from Section 2(uu) which defines a ‘producer’ as a person who takes the “initiative and responsibility for making a work”. This provision counts on the decision making powers of a producer with respect to a movie, however, it fails to appreciate the intellectual contribution that a director makes in creating a movie, as explicated later in the post.

Non-recognition of direction (director’s contribution) as a separate copyrightable work

Further, Section 13(4) of the Act that protects the separate copyright in any work included in a cinematographic film is also of no help to a director because, unlike the work of a story writer, script writer etc., director’s work is not acknowledged as an independent copyrightable work under the Act. It does not fall within the scope of any of the other works (literary, dramatic, musical, artistic or sound recording) in which copyright subsists under the Act. Accordingly, a director does not hold any copyright under Section 17 which defines the author of a ‘work’ as the first owner of copyright.

Absence of even moral rights protection for directors

Furthermore, directors are not entitled to even moral rights (right to paternity and right of integrity) under the Act. Only performers (Section 38B) and authors (Section 57) have moral rights under the Act. Non-recognition of a director as an author of a film or the author of any other independent copyrightable work disentitles them the special/moral rights that authors are entitled to. Thus, even if the argument against need for economic rights for directors (based on that they are paid huge amounts of money under the contract with the producer) is accepted, the need for moral rights still stands. The director does not have the legal right to even be acknowledged as the director of a film or object to its distortion, mutilation or modification (for instance, in a remake or colourisation) if it is prejudicial to his honour or reputation.

Thus, the Indian Copyright Act not only fails to grant a director any joint rights in respect of a cinematographic film. It also fails to grant them any separate rights in his own contribution to the film, thereby leaving his interests entirely at the mercy of the contract between them and the producer. Interestingly, some countries such as Australia, UK and EU have acknowledged and duly protected the principal director’s contribution to a film under their copyright law.

Joint authorship proposal under the Copyright (Amendment) Bill, 2010

Appositely, the Copyright (Amendment) Bill, 2010 proposed making the principal director as a joint author and copyright owner in a cinematographic film and accordingly proposed amendment of sections 2(d)(v) (providing that both the principal director and producer are ‘authors’), 2(z) (clarifying that a cinematographic film is a ‘work of joint authorship’) and section 17 (providing that the principal director and producer are jointly the first owner of copyright). However, a Parliamentary Standing Committee in its report on the Bill recommended against this proposal and it was eventually dropped from the Bill.

Need for protection of directors’ rights

A director is the main creative force behind a movie. He exerts his intellectual labour and skill to visualise the script and directs all the crucial artistic and dramatic features of the film. He gives a visual expression to a script and converts it into a film. Therefore, it is the responsibility of the copyright law to protect the fruits of the director’s labour, skill and judgment.

Auteur Theory

The debate over the authorship of directors has its roots in Auteur theory, a theory of filmmaking which originated in France in 1940s. The theory considers a director as the primary creative force behind a movie and thus, its author. It highlights the importance of the director’s skills in the finality of the work and underscores the impact of director on the movie.

However, since this theory endorsed an eclectic approach to cinematic authorship and promoted the idea of singular authorship, it has been disregarded by many cinematic scholars and critics.

Dominant Author Test

Interestingly, in 16 Casa Duse LLC v. Alex Merkin et al (2015), the US Court of Appeals for the Second Circuit adjudicated an issue involving a copyright claims by a director. The Court rejected the director’s claim of copyright in his contribution to the film, holding that “a director’s contribution to an integrated ‘work of authorship’ such as a film is not itself a ‘work of authorship’ subject to its own copyright protection”. Further, it also rejected his claim of copyright ownership over the film. Unlike in Indian law, there’s no provision in the US copyright law that defines an author in case of a cinematographic film/motion picture as the producer. Therefore, since both the parties claimed copyright in the film but also agreed that they were not the joint authors, it delved into the dominant‐author inquiry in order to determine the claim. It looked into three factors – who exercised more decision making authority, the way in which the parties billed or credited themselves, and who executed the relevant agreements with third parties – and came to conclusion that in this case, the producer was the dominant author of film and thus also, its sole copyright owner.

Thus, if it is considered infeasible to make the director of a film its joint author in all cases, the authorship claim could be left to be determined by the court in each dispute as per the facts and circumstances of the case. The factors considered in this case could provide a useful yardstick for such determination.

I believe that monetary risk should not be the ultimate determinant of authorship and copyright ownership in a movie. A director should be given due recognition for his creative work, given the critical role he plays in the making of a movie. The current declination of a directors’ authorship of a movie not only defies Locke’s labour theory but also derogates Hegel’s theory of IP as an expression of one’s personality.

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Earlier this month, the Supreme Court held that legal pleadings/court records cannot be accessed through the Right to Information Act if the procedure for obtaining them is provided for under the procedural rules of the court (for a wonderful summary of the decision, see Prashant’s piece in The Hindu here).

Pleadings are documents of various sorts submitted by parties to a case. In India, it is extremely difficult to access these documents. As detailed in this Vidhi report, one may even have to resort to underhand means to access them without going through the long drawn out, and often uncertain formal route.

Nevertheless, of late, many legal news reporting websites have started making pleadings publicly available. This is often made possible by the parties to cases or the lawyers representing them, sharing copies with these websites. What if they don’t share such copies and a website obtains them from other sources and publishes them without their permission? Or another website publishes the pleadings obtained from the website which published them with permission?

This is an interesting copyright law question, but before we examine that, it is worthwhile to see if copyright may be claimed over pleadings in the first place.

Copyright in Pleadings

As per Section 13 of the Act, copyright subsists in an ‘original’ literary work. Will pleadings qualify as an ‘original’ literary work though? Although they are almost always a narration of facts (which are not copyrightable), such narration itself varies from person to person or lawyer to lawyer and requires skill and judgment. Otherwise, there is no reason why one would prefer lawyer ‘x’ over ‘y’ for drafting pleadings. Thus, pleadings appear to cross the idea-expression threshold (Nimmer too supports this proposition) and qualify as an ‘original’ literary work. In any case, at least the portions where facts are not being mechanically reproduced should qualify for copyright protection.

As per Section 17, copyright over a literary work typically vests with the author. Nevertheless, Section 17(c) provides that if a piece of work was made in the course of an author’s employment under a contract of service, the first owner of copyright in such work shall be the employer. In the case of pleadings, although they are typically commissioned by clients, lawyers (who are the authors of the pleadings) cannot generally be seen as being ‘employed’ by them under a contract of service.

Thus, arguably, pleadings are copyrightable and copyright over them lies with the lawyers. What this then means is that they come with the entire gamut of protection available to a copyrighted work. Therefore, unless otherwise provided, it is only the lawyers, being the copyright owners of such pleadings, who have the exclusive right to reproduce, disseminate etc. such pleadings.

Publication of Pleadings and Fair use

However, given that access to pleadings is an important part of an ‘open court policy’ – as explained in the Vidhi Report, it is imperative that these documents be available to the public. Does copyright law take this into account and allow one to make pleadings available to the public?

Section 52(1)(d) of the Act permits reproduction of any work without the consent of the copyright owner, if it is for the purpose of a judicial proceeding or a report of a judicial proceeding. Therefore, if one reproduces pleadings for the purpose of a report on a case, they would not be liable for copyright infringement. However, what does ‘reproduction’ under this provision mean? Would it mean only making a copy of a work or also include its publication (making it available to the public)? The case at first appears to be the former (as also argued by Thomas in his post here), as the very next clause and a few other clauses as well, use the terms ‘reproduction’ and ‘publication’ distinctively.

However, such narrow interpretation of Section 52(1)(d) does not make much sense. For one, there is little point in making a copy for the purpose of a report of a judicial proceeding, without actually being able to publish it? Further, one starts getting the sense that the framers may not have used the word ‘reproduction’ in Section 52(1)(d) in a narrow sense if one were to read Section 52(1)(m). This provision states that ‘reproduction in a newspaper […] of an article on current […] topics’ is fair use! How can there be a reproduction in a newspaper without a concomitant publication? This provision has even been relied upon by some organisations to re-publish entire articles published by other organisations on their websites (see our posts on two such cases here). In one of the cases, the Madras High Court also noted that articles can be published under this provision (“Section 52(1)(m) therefore protects the action of the respondents when they want to publish the compilation of the literary works of Thanthai Periyar stated to have been published in the Weekly Kudiyarasu between the years 1925 and 1949.”). Therefore, the word ‘reproduction’ as used in Section 52(1)(d) could also be argued to include even publication of any work.

Even if so, publication of pleadings by an archival website without any accompanying reports may not be covered under this provision.

Another possible provision which may exempt unhindered publication of pleadings is Section 52(1)(a)(iii), which allows fair dealing with any work if it is for the purpose of reporting current events and current affairs. However, since this provision is limited to reporting of current events/affairs, it won’t cover instances when legal news websites may want to archive these pleadings or anyone may want to do a report on an older case. Moreover, the provision is limited to fair dealing with a work; thus, reproduction of entire pleadings, as opposed to extracts of them may be difficult to justify in all cases.

Thus, it is unclear whether legal news reporting websites which publish pleadings online, without the authorization of the lawyers who’ve drafted them, will be covered under the fair use provisions of the Act.

Courts’ Issue of Copies of Pleadings and Fair Use

What about instances when courts give out copies to third parties (rather than the parties in the case) under their rules? While making and giving copies to the parties in the case could be said to be reproduction for the purpose of judicial proceeding and thus covered under Section 52(1)(d)), what permits issue of copies to third parties? Some of the High Courts as well as the Supreme Court have rules which allow the registry wide discretion to issue copies of pleadings to third parties, if a sufficient cause is shown. These third parties are not required to show that they are in any way involved in the case or are going to use these pleadings for the purpose of reporting the case. Given that even the Supreme Court’s rule making powers under Article 145 are ‘subject to provisions of any law made by the Parliament’, it is worthwhile exploring where the courts derive the power to issue copies of the copyrighted pleadings to third parties.

Conclusion

For now, much like most other things about the Indian judiciary, access to pleadings is shrouded in a web of unclear laws.

We require a framework where pleadings can be seamlessly reproduced and shared. The utility of such a set-up is axiomatic, especially in a jurisdiction like India with plenty of public interest matters – parties can easily borrow ideas from each other, avoid overlaps in arguments, among other things. At present, the law does not allow for such seamless reproduction and publication. It is important that the law is amended in a way that not only allows publication of pleadings for reporting purposes but also for archiving them.

(This post has been authored by Bhavik Shukla, a 5th year student at NLIU, Bhopal)

Topical Highlight

Swaraj covered all the adjournments issued by the various IP offices in India due to the COVID-19 outbreak. First, he notes the adjournment of all in person hearings in various Patent Offices in India till April 15, 2020, the notice for which directs video conferencing in the alternative. [As per a notice issued today, all video conferencing hearings at the Patent Office scheduled till 31st March stand cancelled]. Second, he refers to notifications adjourning design matters to varying dates. Third, he observes in line with the Public Notice of the Trade Marks Registry that trademark matters scheduled up to 15th April shall be re-scheduled after the said date. [As per a notice issued today, the applicants have been allowed to file requests for extension of time (now or after situation becomes normal).] Fourth, he notes the adjournments by the IPAB in matters listed for Chennai and Delhi. Fifth, he observes that according to the notice issued by the Copyright Office, the Registrar of Copyright shall re-schedule the listed matters in ‘due course of time’. Finally, he provides information on the functioning of various courts in India.

Thematic Highlight                                                                         

Balu discussed the copyright issues in respect of legal pleadings in India, in light of the SC’s recent decision in Chief Information Commissioner v. High Court of Gujarat, wherein it was held that copies of legal pleadings cannot accessed through the RTI Act but only under the procedure provided under the respective courts’ rules. Balu notes that pleadings are copyrightable as they are original literary works involving use of lawyers’ ‘skill and judgment’. Nevertheless, he states that pleadings may, however, be made available to the public by news websites etc. under section 52(1)(d) of the Copyright Act which permits reproduction of a work for the purpose of a report of judicial proceeding. He, however, notes that the provision is very unclear (as it does not use the term ‘publication’) and narrow in its scope (as it may not allow archiving unless accompanied by a report). Further, though he suggests that pleadings may also be published under section 52(1)(a)(iii) of the Act which permits fair dealing with a work for the purpose of reporting current events, he notes that the provision may hinder legal websites to solely archive them, use them for a report on older cases, or reproduce them entirely. Furthermore, he notes that though some courts may issue pleadings to third parties under their rules on basis of a sufficient cause being shown, the source of such power is worth exploring. He concludes by noting that access to pleadings is currently shrouded in a web of unclear laws and necessary amendments should be made in the law to enables unhindered access to pleadings.

Other Posts

In his first post, Lokesh Vyas, our Fellowship applicant discusses the absence of rights of film directors under the Indian copyright law, considering the recent controversy over the making of a trilogy based on the renowned film, Mr. India. He observes that a ‘producer’ is the sole author and owner of copyright in a cinematograph film in India, and the copyright law fails to appreciate the director’s intellectual contribution to it. Furthermore, he notes that a director does not even have moral rights under the Indian law and in absence of the same, his rights are merely contractual in nature. He notes that the joint authorship proposal under the Copyright (Amendment) Bill, 2010, which noted the principal director to be an ‘author’ of copyright in a film should be adopted. He notes that the intellectual labour and skill of the directors should be recognized, if not through amendment in the law, then by courts on a case-by-case basis relying on the Dominant Author test. He concludes that monetary risk should not be the ultimate determinant of authorship and copyright in films, and the director should be given due recognition for his contribution.

Divij wrote on the India-specific recommendations of prominent software and internet industry associations made to the USTR for the Special 301 Report. He notes that these associations have submitted that India be included in the ‘priority watch list’, quoting piracy as a major concern. Similarly, these associations have voiced various concerns over the provisions of the impending Personal Data Protection Bill, especially in respect of provisions affecting cross-border flow of data. He also notes that the Business Software Alliance made specific reference to software patenting in India, while expressing its reluctance to comply with the patent working requirements. In conclusion, he observes that the focus of the representations this year have shifted to data governance over the general concerns of piracy in India.

SpicyIP Announcements

We notified our readers of the Royzz & Co. International Student Scholarship for IP LL.M. at the University of New Hampshire, Franklin Pierce School of Law. Further details including the scholarship’s first recipient’s experience as well as application guidelines can be found in the post. The deadline for the receipt of scholarship applications is April 1, 2020.

Other Developments

Indian

Judgments

Makemytip (India) Private Limited v. MTB Travel Planner Private Limited and Another – Delhi High Court [February 27, 2020]

The Court granted a permanent injunction restraining Defendant No. 1 from infringing and passing off the Plaintiff’s mark “MAKEMYTRIP” by using a deceptively similar mark “MAKETRIPBAZAAR”, and from infringing the copyright in the Plaintiff’s logo by using the “MY” element in its logo. In arriving at this decision, the Court observed that the mark, domain name, logo and the website design adopted by Defendant No. 1 were deceptively similar/ identical to those of the Plaintiff. The Court noted that the Parties provided the same services, and the use of the mark would lead to probability of confusion and deception. Furthermore, the Court observed that Defendant No. 1 had adopted deceptively similar/ identical elements of the Plaintiff with an intention to ride upon its reputation and goodwill.

Starbucks Corporation v. Copamocha Café and Restaurant and Another – Delhi High Court [February 28, 2020]

The Court granted an ex parte permanent injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “FRAPPUCCINO” by using an identical mark in respect of handcrafted beverage items. The Court observed that the Plaintiff had sent notices and subsequently followed up in respect of the name change of the Defendants’ beverage, but its name remained unaltered. Accordingly, the Court noted that the Plaintiff had made out a case for the grant of an injunction.

M/s. Matrimony.com Limited v. Kalyan Jewellers India Limited and Others – Madras High Court [March 13, 2020]

The dispute between the Parties arose on account of the Respondents’ alleged infringement and passing off of the Appellant’s mark “MATRIMONY” along with various prefixes. The Single Judge dismissed the case, and noted that the marks of the Appellant were generic and descriptive in nature. With respect to infringement, the Court observed that the Respondents had merely used the ‘Adwords’ in order to get into the platform from which the customers could choose from the websites to use. The Court noted that an action for passing off could not be made out as the Appellant’s marks were generic in nature, and giving it monopoly over the marks would lead to lesser choices for the customer. Additionally, the Court stated that the Appellant could not indicate that its marks had attained secondary meaning in the nature of the trade, and noted that the customers take decisions in respect of websites consciously.

M/s. Kaleesuwari Refinery Private Limited v. M/s. SK Food Products – Madras High Court [March 13, 2019]

The dispute between the Parties arose on account of the Defendant’s alleged infringement of the Plaintiff’s get-up, colour scheme, design, phonetical and alphabetical font similarity on its packaging of edible oil. The Defendant submitted an affidavit through which it claimed that it shall stop using the same in respect of its packaging. In light of the affidavit, the Court disposed of the case.

Hakimuddin Bhemat v. Supreme Sales Agency – Calcutta High Court [March 16, 2020]

The Court modified the subsisting interim order between the Parties, thereby allowing the Defendant to use the mark “SSG BHARAT” as the same was not opposed by the Plaintiff and was not deceptively similar to the Plaintiff’s mark “BHARAT SHAKTI”.

Peps Industries Private Limited v. Kurlon Limited – Delhi High Court [March 16, 2020]

The Court refused to grant an interim injunction in favour of the Plaintiff, thereby not restraining the Defendant from using the mark “NO TURN” in respect of mattresses. The Court after discussing certain decisions noted that the action of passing off shall be unaffected by registration provided under the Trade Marks Act. In respect of the Defendant’s use of the mark, the Court observed that it had been using the mark since 2007 but its sales were intermittent in nature, and accordingly a defence under Section 34 of the Trade Marks Act could not be established. Furthermore, the Court noted that the Plaintiff was the later user of the mark since 2008 and its mark was descriptive in nature. The Court also stated that the Plaintiff had failed to place any documents on record to show that its mark had acquired distinctiveness through use.

Prof. Dr. Claudio De Simone and Another v. Actial Farmaceutica SRL and Others – Delhi High Court [March 17, 2020]

The dispute between the Parties arose on account of the Defendants’ alleged passing off of their new product through linking it with the Plaintiffs’ “Di Simone Formulation” and thereby unjustly enriching themselves at the cost of the Plaintiffs. The Court observed that the plaint did not disclose any cause of action against the Defendants, as the action of passing off could not be initiated in respect of patents, which are a statutory right in India. Moreover, the Court noted that the patent based on which the Plaintiffs had asserted their claim had already expired in the U.S. The Court also noted that in the absence of a patent in favour of the Plaintiffs in India, its know-how was in the public domain as its U.S. patent had expired, and could have been freely adopted by the Defendants.

News & Opinions

• Many coronavirus related trademarks such as “dhl CoronaVirus Preventive”, “Anti-Corona”, “Corona Sanitizer”, “Nocorona”, “Corona Safe: Antivirus Spray with Vitamin E”, “COVID-RELIEF”, “Covidac” and “COVIDIUM” filed with the Trademark Registry (see here and here).
• CoSara Diagnostics Private Limited, an Ahmedabad-based firm is the first to get a licence to manufacture COVID-19 testing kits from the Central Drugs Standards Control Organisation (CDSCO).
• Cipla announces to work with Indian Institute of Chemical Technology (IICT) to develop three antiviral drugs – Favipiravir, Remidesivir and Bolaxavir – which are being tested for treatment of Covid-19; Lasa SuperGenerics also announces to work with IICT to develop Favipiravir.
• Cotton seed manufacturers want government to immediately increase price of BT cotton seed in light of the fast approaching planting season in Punjab and Haryana.
• IIT Delhi start-up, Fabiosys Innovations is developing infection-proof fabrics, which kill around 99.9% of the pathogens in 1-2 hours, to prevent Hospital Acquired Infections, which are a big problem with countries like India.
• Patent Office revokes Pharmacyclics Inc.’s patent for its anti-cancer drug, Ibrutinib on the ground of obviousness, following a post-grant objection filed by Laurus Labs.
• A piece in The Print argues that the Gopalakrishnan-led committee, constituted by the Ministry of Information and Technology for creation of a set of rules to govern non-personal data, must define non-personal data in a manner that protects IP rights, serves genuine public interest and promotes innovation.
• A Parliamentary Standing Committee in its report presented in the Lok Sabha panel urges the Government to include a fair use clause in the Cinematograph (Amendment) Bill.
• In the wake of COVID-19, Bombay HC postpones site visits and meetings by court receiver’s staff in 16 IP disputes by atleast one week.

International

• Israel for the first time invokes its compulsory licensing powers to permit import of generic version of HIV drug, Kaletra which is still under a patent there unlike in many other countries including India, to treat patients affected with COVID-19.
• Donald Trump offers large sums to German company for exclusive US access to coronavirus vaccine.
• IP offices around the world take various measures in the wake of COVID-19.
• Many library copyright specialists in the US issue a public statement to provide clarity for U.S. colleges and universities about how copyright law applies to the many facets of remote teaching and research in the wake of the COVID-19.
• Anthony Levandowski, former head of Uber’s self-driving unit has pleaded guilty to stealing trade secrets from Google.
• The German Federal Constitutional Court declares the Act of Approval for the UPC Agreement null and void.
• Spherix Inc. stocks soar after executing an agreement with the University of Maryland, Baltimore for a coronavirus drug.
• Numerous applications have been filed before the USPTOfor registering ‘coronavirus’ related trademarks .
• Many copyright holders around the world make a number of works freely accessible in order to ‘ease the coronavirus impact’ [see for instance, here, here, here, here and here]. This includes IP media platforms like WTR and IAM who have made Covid-19 coverage free to view.
• Labrador Diagnostics clarifies that its infringement action against bioMerieux Inc. focuses on activities over the past six years and does not relate to COVID-19 testing.
• A piece in The Hill argues that even if the coronavirus vaccine is invented, it may very well be unaffordable.

In these unprecedented times where a pandemic has brought the globe to a standstill, the top-most concern of IP owners (of course, other than to save themselves from COVID-19) would be about meeting deadlines in IP prosecution. This is because, deadlines in IP prosecution are often hard deadlines, and if extendable, involve a fee – sometimes these require the filing of signed/ notarised/ stamped documents. This concern is equally and anxiously shared by IP lawyers who assist IP owners around the world in their prosecution matters.

In the wake of COVID-19, many IP offices around the world have extended deadlines and waived of the fees for extension (yes, it would be insensitive to levy a fee for extension for nobody’s fault in these trying times). Some examples of such IP offices that rose to the occasion and relaxed the formalities and eased the stakeholders in some measure in the wake of COVID-19 are as follows:

• On March 16, the EUIPO issued a resolution suspending all time limits falling between March 9 and April 30 that affect parties in all proceedings till May 1. The EUIPO is also operating a page which gives regular updates;
• In March 17, Italy enacted the Italian Care Law under which deadlines and other proceedings have been suspended till June 2020.
• On March 16, the USPTO waived fees in certain situations for those impacted, though it made clear that there was no suspension or extension of statutory deadlines. Further, on March 19, it announced the waiver of the requirement for an original handwritten signature for certain correspondence.
• On March 19, IP Australia announced extension of time for patents, trademarks and designs to those impacted. Requests for waiver or refund of the fee for the extension of time will be considered on a case by case basis.
• On March 19, the Canadian IPO extended all deadlines falling between March 16 and 31 to April 1 with a note that if the current circumstances continue, this date may be further extended.
• On March 20, WIPO announced that users of the Madrid System who have failed to meet its deadlines may be excused if, within five days after regaining access to communication, WIPO is contacted with sufficient evidence of the reasons why such failure should be excused. However, WIPO must receive such communication no later than six months from the date of expiry of the time limit.

Last week, the Indian IPO had also taken some measures along these lines which were covered by Swaraj’s post here. These measures mostly relate to adjournment of hearings. A series of tweets from the handle @IPWellWisher yesterday urged the Government to look at several of the other practical issues surrounding the compliance with the formalities in IP prosecution that still remained during COVID-19 circumstances, including non-extension of deadline for filings.

This morning a couple of other notifications came up on the IPO’s website. The first one relates to patents and states that all VCs scheduled up till March 31 are cancelled in view of the lock down.  Let’s hope this gets further extended, because, to me, the situation does not seem like it would abate by March 31.

The second one relates to trademarks. It states that in view of the concern raised by the stakeholders regarding submission of document in the prevailing times, applicants can file request for extension of time (now or after the situation becomes normal) under Section 131 of the Trade Marks Act, 1999 read with Rules 109 & 110 of the Trade Marks Rules, 2017. I reproduce the section below:

Extension of Time 131.- (1) If the Registrar is satisfied, on application made to him in the prescribed manner and accompanied by the prescribed fee, that there is sufficient cause for extending the time for doing any act (not being a time expressly provided in this Act), whether the time so specified has expired or not, he may, subject to such conditions as he may think fit to impose, extend the time and inform the parties accordingly.

(2) Nothing in sub-section (1) shall be deemed to require the Registrar to hear the parties before disposing of an application for extension of time, and no appeal shall lie from any order of the Registrar under this section.

While the sincerity of the IPO should be lauded for assuaging the concerns of the stakeholders, I am afraid that this notification appears to have no legal standing as far as statutory deadlines are concerned. I say this in view of the exception provided under section 131, namely, “not being a time expressly provided in this Act”.  I am quoting from a judgement of the Delhi High Court in Sunrider Corporation vs Hindustan Lever Limited And Anr which reiterates this position.

10. Coming now to the contrary argument advanced by the learned Counsel for the respondent No. 1 that the provisions of Section 131 of the 1999 Act read with Rule 105 of the 2002 Rules permit extension of time and, therefore, Rule 50 would have to be read down in that context. Section 131 reads as under:

………….

The Registrar has been empowered to extend time for doing certain acts provided he is satisfied that there is sufficient cause for extending the time. But there is an exception to this power. The exception being that it must not be a case where time is expressly provided in the Act.

The Delhi High Court in that case was specifically dealing with the issue whether the Registrar of Trade Marks has the power to extend the time for filing of the evidence affidavit in support of an opposition beyond the maximum period of three months prescribed under Rule 50(1) of the Trade Marks Rules, 2002.

I was more alarmed after a quick review of the IP statutes that revealed that barring the Patents Act, none of the other statutes provide for a situation where the Controller has the powers to condone the delay in filing of a document for which there is a time period that is prescribed.  Of course, I would stand corrected here if any of our readers have reasons to believe otherwise. As for patents, there is a clear provision under Rule 6(6) of the Patents Rules, which seems to the basis for the recent notification which I link here. Does this mean that a Presidential Ordinance will be the only means to address these concerns as far as trademarks, designs, GIs and copyrights are concerned?

Two last issues that I want to flag relate to signature and stamping of documents and the issue of waiver of fees for extension.  As of this morning, 75 districts in our country and other cities in several foreign countries are under lockdown. If a deponent to an affidavit or signatory of a certain document is unwell, how best can they file these? Would the IPO accept unsigned, unstamped documents with an undertaking that a document complete in form would be filed once COVID-19 exits the scene? Would the IPO excuse stamping in a similar way? Most importantly, in these exceptional circumstances, would the fees be waived in cases where the applicants are unable to meet extendable deadlines?

A short while ago, AIPPI also sent a communication to the Controller General, DPIIT and the Minister of Commerce highlighting these issues.  Let’s hope the IPO urgently addresses these issues and eases the concerns of IP owners and lawyers in India and overseas.

[Update: The Supreme Court has issued an order a while ago, taking suo motu cognizance of the  difficulties that may be faced by lawyers and litigants across the country in the present COVID-19 situation. The order, passed in exercise of its powers under Articles 141 and 142 of the Constitution of India, extends the period of limitation (whether condonable or not under law) for filing of petitions/applications/suits/appeals/all other proceedings in all courts, tribunals and authorities across the country with effect from March 15, 2020 till further orders.]

Just as the country is coming to terms with the reality of the COVID pandemic, we are being warned of mass shortages of everything from quality masks to hazmat suits to diagnostic kits to ventilators and other crucial medical equipment. The Health Ministry should have prepared strategic stockpiles of this material in preparation of such a pandemic but unfortunately this has not been done.

The challenge now for India, is to rapidly build up a stockpile that can cater to not just the first-wave of this pandemic but also a possible second or third wave that may or may not breakout over the course of the next 12 to 18 months. The cost of such a stockpile is likely to be enormous for a country of 1.34 billion people. While most of the older technology should be out of their patent terms and hence more than affordable (provided there are multiple competitors based in India), the newer technology is likely to cost the country a king’s ransom. This is because most of the newer technology, say even for something like respirator masks required by medical staff dealing with highly contagious diseases such as COVID, are covered by patents, thereby increasing their price.

In the last fifteen years, since India became compliant with the Agreement on Trade Related Intellectual Property (TRIPS), foreign companies that overwhelmingly own most patents in India have sued Indian companies for alleged infringement of patents covering everything from medical devices (BBraun v. PolyMed)  to drugs to even masks (3M Innovative Properties v. Venus Safety). Apart from the high price of such technologies, there is also the fact that many of these patented technologies are not manufactured in India. In times of a global epidemic it goes without saying that foreign companies are going to cater first to their domestic needs and rightfully so. We would have expected Indian patentees to do the same. But that does not mean that the Indian government has to sit back and let these foreign patentees exercise their patents to prevent Indian manufacturers from entering the field at a time when India and the developing world (especially its SAARC neighbours) appears to be ill-equipped to deal with the worst pandemic since 1918. Wide availability of medical devices, masks and drugs at an affordable price should be the ultimate aim of any Indian IP policy during this pandemic.

Compulsory licensing and government use

India’s Patents Act gives the government a number of options to break the monopoly of these foreign patentees.

The first option, under Section 92 is for the government to declare a national emergency due to COVID and notify the patents in questions after which any person interested in manufacturing the said patent can make an application to the Controller of Patents who can then issue a compulsory license without following the regular procedure of time-consuming hearings. The patentee will be paid a reasonable royalty rate as fixed by the Controller of Patents.

The second option, for the government under Section 100 is for it to authorize specific companies to use any patents or patent applications for the “purpose of government”. Once the Central Government gives such an authorization to Indian companies, they can begin manufacturing while negotiating royalties with the patentees. In case the Central Government or its authorized company fails to reach an agreement with the patentee, it is up to the High Court to fix the reasonable royalty that is payable to the patentee.

The third option for the government is to simply acquire the patents in question, under Section 102, from the patentees much like it acquires land for public purpose. Once again if the Central Government and the patentee cannot reach an agreement on the cost of the patents, it is up to the High Court to fix the price of the patents.

In each of these cases, the reasonable royalty is to be fixed with the objective of ensuring the widest possible availability of the patented technology at the most reasonable price for Indian consumers.

While India’s trading partners, especially the United States, are going to be unhappy with the exercise of any of the above three options, it is a fact that in the past the United States has used (or threatened to use) 28 USC 1498 in the times of war and public health crisis, such as the Anthrax scare in 2001, to break patents after paying the owners a reasonable royalty. In the context of the present pandemic, countries like Israel and Equador have either invoked or threatened to invoke compulsory licences for patents that covered potential cures.

The challenge of ‘know-how’

While breaking or acquiring patents is a tempting public policy option, in this time of crisis, the government should keep in mind that there are certain technical limitations to such an approach, namely the existence of “know-how” to manufacture such technology in India. While the patent specification will contain all the technical details required to manufacture the patented invention, there is always an element of “know-how”, that is required to develop mastery over a technology.

To illustrate with a simple example, just because you have the recipe for a dish served in a Michelin star restaurant, it does not necessarily mean that you can prepare a dish based on the recipe in a manner where it tastes exactly like the one made by an actual Michelin star chef. In some areas, such as pharmaceuticals India has plenty of ‘know-how’. It may not have similar ‘know-how’ in other technologies and it is prudent for the government to keep this in mind before deciding to exercise any of the options under Sections 92, 101 or 103. The lack of ‘know how’ can have serious quality implications especially for medical technologies.

Negotiations as an alternative

Given that compulsory licensing or government acquisition is always likely to raise the hackles of our trading partners, the government can always consider negotiating either bulk public procurement or technology transfer, while waving the sword of more coercive actions as a negotiating tool. It is a known fact that bulk public procurement can massively reduce the price of even patented products. The question however is whether many of these foreign patentees have the manufacturing capacity to cater, in the short run, to the expected demand from India. If they lack capacity they should be encouraged to transfer technology to Indian companies under reasonable royalty agreements. In the past, pharmaceutical companies such as Gilead have licensed their drugs to Indian companies at reasonable royalties.

Putting together an IP taskforce

Taking on American or European patentees, even during a pandemic, requires serious preparation. The Prime Minister’s Office (PMO) should consider putting together a taskforce consisting of public health experts, patent office officials and experts in intellectual property to put together an IP policy for not just this pandemic but to build a strategic stockpile for future pandemics. It should deal with not only existing patents over respirator masks, hazmat suits and ventilators but also the patents that are likely to be filed very soon for diagnostic kits, drugs and vaccines meant to diagnose or treat COVID-19.

After conducting a patent landscaping exercise for the requisite patents, the government should scrutinize the information filed by patentees in their Form 27 filings under Section 146 of the Patents Act, disclosing the extent of their sales in India. For example, the Form 27 for 2018, for Patent No. 305126 granted to 3M Innovative Properties, for one of its respirator face-pieces, notes that its sales for 2018 were merely US $24,200 throughout India and that the product is imported from the United States. This makes it a low value patent for 3M and it is unlikely to put up much of a fight in case of a future negotiation.

There will be cries from patentees that such a policy will kill the incentive for innovation etc. but Parliament in its wisdom foresaw such public health scenarios when it provided for remedies such as compulsory licensing or patent acquisitions. If not now, then when will we use these provisions?

The Covid 19 pandemic has now changed the way most of us are going about our day to day lives. In India, we are now on day 2 of our 21 day nation wide lock-down. In the midst of all that is going on now, Intellectual Property enthusiasts with a keen eye, would have noticed several IP related issues that have been cropping up, even if relatively under-discussed. For this current post, I thought I would do a round-up of various currently relevant IP issues for our readers to ponder upon.

So far on the blog, we’ve already had a few Covid 19 related posts. A couple of weeks ago I wrote on ‘Patent Politics in the time of Corona‘ and more recently Latha wrote about practical concerns in her post ‘COVID-19: How Best Can the Indian IP Office Help its Stakeholders?’. Prashant has also just written a hard hitting post on the urgent need for an IP task force and IP Policy to deal with the mass shortage of masks, medical equipment, etc. He ends with the lines “Parliament in its wisdom foresaw such public health scenarios when it provided for remedies such as compulsory licensing or patent acquisitions. If not now, then when will we use these provisions?”

It’s become amply clear that in the light of people fearing for their safety, IP Flexibilities, Openness, and Access have suddenly become much more significant in people’s minds. While these are principles that the several Public-interest related movements have been fighting for, for decades, it has taken a global pandemic for them to be finally taken seriously. One hopes that once this passes, the memory of these reasons don’t pass with it. In this post, I merely intend to throw up (hopefully provocative) questions that seem relevant and worth examining. As always, we are happy to consider guest posts on these topics, or any topic that may be relevant to the blog. Without further ado, here we go:

Open Access / Open Science: 

 “Health is perhaps the area of most intense demand for greater access to scientific and technical information, partly because failure to obtain it can be literally fatal”. H. Momen did not pre-empt the current situation when writing this statement in the 2003 WHO Bulletin. It was a reality then, and it is a reality now. Almost as soon as it became clear that Covid 19 was going to be serious, there were several calls for open sharing of information, research and data regarding the virus. Nature put out an editorial in early February, titled, ‘Calling all coronavirus researchers: keep sharing, stay open‘. To several, this was a new way of going about their research (see here). Xin Xu from Univ of Oxford has put out very detailed note on several of the Open Access initiatives with respect to Covid 19, while also discussing ‘responsible’ open science – click here to read it.

Image from here

What if this had remained copyright protected, with life of author plus 60 years as the protected period? Why shouldn’t it have? Should we necessarily rely on the largess of publishers to be charitable in times of need? Does that mean they can decide what is a time of need? Academic publishing in particular is both notoriously expensive, as well as very well understood to not really be giving any financial recompense to the authors. Of course, there are several benefits that big publishers bring to the table. However, it is surely time for a more sustainable and equitable publishing model to be taken up more seriously.

Before moving on to other areas, I’m reproducing a notable example of the impact that copyright can have on public health as given in this paper:

 “I recently met a physician from southern Africa, engaged in perinatal HIV prevention, whose primary access to information was abstracts posted on the Internet. Based on a single abstract, they had altered their perinatal HIV prevention program from an effective therapy to one with lesser efficacy. Had they read the full text article they would have undoubtedly realized that the study results were based on short- term follow-up, a small pivotal group, incomplete data, and were unlikely to be applicable to their country situation. Their decision to alter treatment based solely on the abstract’s conclusions may have resulted in increased perinatal HIV transmission.”
– Arthur Amman, President of Global Strategies for HIV Prevention

Access to culture:

However, open access hasn’t just been about access to scientific articles. Several are realising that being quarantined also means that many no longer have access to recreation, culture and socialising activities – the lack of which is a disincentive for staying indoors. Audible, for instance, has opened up its younger audience focused audiobooks for as long as schools remain closed. Closer home, Amar Chitra Katha Media is offering a free one month subscription to everyone, till the end of March. Moves such as these, are of course, more likely brand building and sales related tactics more than addressing ‘access’ related concerns. Nonetheless, it does make one ponder over the fact that access to culture (if I can use that term here) is important enough that publishing houses realise that in times when access is denied, providing such access helps build their brand image too. Perhaps worth considering the importance of libraries vis-a-vis access to culture, in not so disastrous times, for those who cannot afford to purchase it otherwise. On the note of libraries, the Internet Archive has also just announced a National Emergency Library (for USA) to deal with the emergent wait list problem that is now being faced by the nation’s ‘displaced learners’. Click here to read about it. That term ‘displaced learners’ is quite a useful one I would think – since it emphasises that not all ‘students’ may be in schools, or even be able to be in schools – reemphasizing the importance of having learning materials available to the public.

Speaking of access to culture – it would be extremely interesting to know whether Netflix (who along with YouTube have been asked to reduce their streaming quality to prevent the Internet from collapsing!) , Amazon Prime, etc have seen a boost in subscriptions over the last couple of weeks. Steam, the popular gaming platform, has already reported its highest ever numbers. For that matter, what changes in ‘piracy’ rates have taken place? Based on the content from a number of WhatsApp forwards I’ve received with a title along the lines of  “Quarantine starter pack”, my guess is that it has also risen dramatically – but it would be interesting to see whether it has increased in proportion with the rise in ‘legal’ streaming services, or more, or less. Then there are other questions as well. In these times of unprecedented ‘social distancing’ – how does the rise of digital based access to culture affect persons with visual disabilities or other print disabilities? Yes, there are already certain initiatives such as Sugamya Pustakalaya. However, what about initiatives specific to the burdens of social distancing? In other words – while students from the average middle class family who are now sitting at home can use online gaming or instagramming or whatever else for their ‘socialising’ and ways of passing time, are there accessible methods available to persons with disabilities? Are there copyright exceptions and flexibilities that are being underused / still not present?  If ever there was a time to examine those questions – it would be now.

Patent ownership, Compulsory Licensing and Clinical Trial Data

(Several links in this section are from the discussions over at KEI’s IP-Health listserv)

I’ve already touched upon several of Big Pharma issues in my earlier post, and Prashant’s post touched upon issues that the Government would be wise to look into for immediate measures during this pandemic. However a lot more has been happening as well. For the sake of brevity, I’ll mention these just in the form of updates.

As I had earlier discussed, Remdesivir is one of the treatments that is appearing promising. It had started as a treatment for ebola, but clinical trials showed that it turned out to be not as effective as first thought. From what I can tell from this link, Remdesivir was developed by the University of Alabama at Birmingham (UAB), and Gilead Sciences in a Private Public Partnership. I am guessing (and open to correction) that this means the initial research and development was done by UAB and it was taken to clinical trials by Gilead. Coming back to present times – China’s Wuhan Institute of Virology, which seems to have first discovered the potential of Remdesivir as a treatment for Covid 19, appears to have beat Gilead to the punch and filed alternate medical use patents around the world. Even if granted, it seems these may be dependent on Gilead’s earlier patents. Meanwhile on the side lines, there is another interesting development unfolding as BrightGene, a Chinese biotech company seems to be wondering whether they can launch a generic version of remdesivir without approval of the patent holders – since they plan on ‘donating’ the drug to patients. See more on that here.

There are of course other potential treatment drugs – such as Kaletra. Kaletra is Abbvie’s brand name for a fixed dose combination of lopinavir / ritonavir, which is used in the treatment of HIV / AIDS. As it turns out, the treatment is being considered favourably in Israel for treating Covid 19 (though there is a paper that says otherwise). Due to Abbvie’s inability to supply enough of the medicine, Israel invoked a compulsory license – for Indian generic Hetero to import their generic version to Israel, for the purpose of Covid-19 treatment. See more on this here. It’s worth noting that the fear of not having sufficient supplies of a drug that might not even work was sufficient for Israel to issue a Compulsory Licence. (One wonders if Israel will come under the same kind of 8-years-and-running-criticism that India’s been receiving for its CL usage back in 2012, for a drug that actually did work). As per this update, the generic version is available in India because the Indian Patent Office rejected Abbvie’s patent application earlier. A few days after Israel issued this compulsory licence, Abbvie declared it would not enforce these patents globally.

Aside from Israel though, other countries too have made loud and clear signals that Compulsory Licensing options are definitely on the table. As KEI reports, Chilean Chamber of Deputies approves resolution for compulsory licenses for patents relating to the coronavirus virus and Legislative Committee in Ecuador approves resolution on compulsory licensing of patents relating to the coronavirus. The Kluwer Patent Blog notes that Germany is also considering similar action, and it appears Canada is also preparing for more CL type activity (see their Patent Act amendment here). Will the first world pressure against the use of Compulsory Licences continue, even after this pandemic has proven how necessary they are? Would it even be in their interests to start actively advocating for more patent flexibilities as a norm? Check here for the MedicinesLawPolicy blog’s post on Covid-19 and the comeback of compulsory licensing

Image from here. Image put in for generalised information on the timelines for drug approvals and research

And even if CLs are no longer a bad word – what about the barriers posed by regulatory exclusivities? See here for eg. Various ‘developed’ pharma patent system allow for exclusivity over clinical trial data – separate from exclusivity granted via patents. This allows owners of such data to prevent generic drug makers from relying on that data for their regulatory approval, thus necessitating separate clinical trials (i.e., many years and a lot of money) by the generic entrant.

Even as Gilead keeps mum about the patent dispute over Remdesivir, it had applied for and received from the US FDA permission to designate Remdesivir as an ‘orphan drug’. Among other things, this designation, (that is reserved for treatments for ‘rare diseases’ i.e.,affecting a tiny minority of the population), allows 7 years of data exclusivity. This article has more, including a mention of Gilead’s former lobbyist being part of the White House’s Corona task force. And here, KEI notes that the FDA tried to keep Gilead’s date of application as confidential, since it would reveal whether they had applied for this very early on when there were very few patients, or whether they had applied much later, after it had become a pandemic. It turns out, they had applied in early March, well after it was far far from a ‘rare disease’, begging the question of why it was granted this status. Soon enough, presumably due to bad press, Gilead requested that this status be rescinded. These developments, while US specific, could have ramifications for other parts of the world as well. As we’ve seen in the past – Big Pharma has been happy to prevent poorer countries from having accessible medicines so long as they have a ‘richer’ market elsewhere. What implications do US’ Public-interest-unfriendly IP policies and captured regulators have on other countries, in times of emergency like now?

Drug Development Models

In addition to the above two treatment possibilities, there are at least two other treatment options that are being seen to have positive potential. In order to quicken things up, the World Health Organisation is organising a global coordinated mega-trial, called SOLIDARITY, for these four treatment options. ScienceMag has a detailed description of it here. With similar motivations of quicker and cheaper treatment – Costa Rica has asked the WHO to help create a global IP pool for technologies relating to Covid 19. As per KEI,:Costa Rica proposes the pool “should include existing and future rights in patented inventions and designs, as well as rights in regulatory test data, know- how, cell lines, copyrights and blueprints for manufacturing diagnostic tests, devices, drugs, or vaccines. It should provide for free access or licensing on reasonable and affordable terms, in every member country.” Is it possible that with this pandemic, R&D – price delinkage will finally start to gain momentum?

More from you?

This post has rambled on for long enough by now. There is a lot more on Covid 19 centric IP issues of course – from what seems to be India’s first Covid19 related IP dispute (case between HUL and Dettol, that SpicyIP will be writing on soon), to various trademark related queries – Would a “Corona Handwash” trademark be valid or is it too descriptive? What about “Karo na handwash”? What is Corona Beer’s take on all of this? What are the IP issues with the various counterfeit issues that are bound to be taking place? I’ll leave you to ponder over these, and perhaps write in to us with some of your thoughts as well. Finally, I’ll leave you with what has been my favorite Covid-IP headline of these last few months – from TechDirt: SoftBank Owned Patent Troll, Using Monkey Selfie Law Firm, Sues To Block Covid-19 Testing, Using Theranos Patents.

Image from here

In what seems to be India’s first (reported) coronavirus related IP dispute, Hindustan Unilever (HUL) took Reckitt Benckiser (RB) to the Bombay High Court over RB’s most recent Dettol handwash advertisement, alleging that it disparages HUL’s Lifebuoy soap trademark.

Background

The case came to the court after the HUL (‘Plaintiff’) came across RB’s (Defendant) advertisement promoting its Dettol handwash, which portrayed that bar/solid soaps aren’t as effective as the liquid soap for washing hands, which is particularly important for tackling COVID-19. The contention put forth by HUL was two-fold. First, that the Dettol handwash ad disparaged Lifebuoy soaps by showing a soap with the same shape, configuration and color as HUL’s registered red Lifebuoy soap; and second, by copying HUL’s advertisement which was published earlier. In its plaint, HUL claimed that while it was trying to promote awareness about COVID-19 by encouraging the habit of regularly washing hands, using not just Lifebuoy soaps, but rather any soap, the Defendant was aiming to disparage and denigrate HUL’s product.

HUL made a claim that in light of the World Health Organization’s guidelines to use soap and water for regular hand washing, the Dettol ad allegedly creates a scare and falsely propagates that soaps are ineffective. The plaint said –

…Nations across the world are communicating just the opposite and asking people to wash their hands with soaps and water whereas the Defendant is creating scare amongst the general public by falsely propagating that soaps are useless by maligning the market leader in the soaps category. When the need of the hour is for everyone to come together and work towards common good, the Defendant’s action is irresponsible and against public morality.

For this, HUL sought Rs. 1 crore in damages and a permanent injunction against RB. This matter was heard by a single-judge Bombay High Court bench headed by Justice. K R Sriram. Before the suit could venture into substantial claims and averments, RB agreed to suspend the use of the impugned ad from 12 PM March 22, 2020 to April 21, 2020, for a period of one month.

What the Precedents Hold?

Based on the cases of HUL v. Gujarat Co-operative Milk (the Amul case) Reckitt Benckiser v, HUL, GlaxoSmithKline v. Heinz, Pepsi Co v. Coca Cola etc., which concerned comparative advertising, for a disparagement claims to succeed –

1. there must be a misleading/false claim regarding the plaintiff’s product,
2. the claim leads to the deception of the consumer, and
3. the same is likely to affect consumer behavior.

In Reckitt Benckiser v. HUL, the Delhi High Court held that an ‘orange bar soap’ could easily be identified as the Plaintiff’s product, the Dettol soap, and hence held in favor of them in a disparagement case that is very similar to the current case.  The Amul case looked into what effect a claim based on common parlance can have on the public (the claim was regarding the use of Vanaspati in frozen desserts). Glaxo held that a more particular and precise claim will have a higher and more serious effect on the public. All these cases were decided in favor of the plaintiff.

The defenses available against the same are contained in Section 30(1) of the Trade Marks Act which states that an advertisement will not be considered to be infringing if it is in accordance with the honest practices followed in industrial or commercial matters and if it does not take an unfair advantage/ is not detrimental to a distinctive trademark. Often times, even the commercial free speech argument is invoked as a defense against a disparagement claim as Art. 19(1)(a) of the Constitution protects commercial speech that is not unfair, misleading or untruthful.

Is There a Prima Facie Case?

While the Dettol advertisement is no longer available for us to be able to check the claims made by HUL, both the parties are not new to comparative advertising. (You can read our posts on comparative advertising here and disparagement in advertising here and here) Given the claims of HUL, a question arises if RB’s puffery of its product is permitted given Section 30 of the Trade Marks Act, which allows the same as long as there is no detrimental effect to a rival’s registered mark. As per the reports available, HUL is claiming that Dettol has made a false claim that bar soaps aren’t effective (1^st requirement), which in turn leads to the deception of the consumer (2^nd requirement), which further leads to them probably not wanting to use bar soaps during the pandemic, thus fulfilling the 3^rd requirement of affecting consumer behavior.

While Dettol’s ad may have passed for puffery, if HUL’s claims about the ad are proved right, given the precedent, it would almost immediately be hit by Section 30 of the Trade Marks Act because the ad can be seen to have a detrimental effect against the Plaintiff’s product with respect to views on its efficacy, especially at a time when we are scrambling for a cure for the pandemic. Further, the persistence of the COVID-19 pandemic adds to the ‘disparaging’ effect that the Dettol ad may have on the Plaintiff’s product. Making a claim that deviates from one of the fundamental responses in light of the pandemic, that is, to wash hands with soap and water, may indeed affect consumer behavior.

However, the above argument is speculative in nature, based on the facts of the case available in the public domain. Since RB decided to suspend the ad and also given that courts are deciding to shut down themselves with matters pushed to more convenient dates and forums, we need to wait till  20^th April, 2020, the date to which the parties consented for the matter to be pushed, to hear about the actual judgment in this case.

In these posts, from an Indian perspective, I shall discuss the main points of ‘2019 Global Trademark Report Card’ by Trademark Working Group (Special 301 Submission for 2020) [For complete list of documents, click here].

i) Certification standards

The submission expresses its disapproval over the procedure for registration of certification marks (especially on 4-month opposition period regarding certification mark standards). It says that, as a result of the procedure, the owner of the mark may lose control over its certification standards.

Comments: I am not sure as to what the report meant by the last statement. A certification mark is a trademark, regulated by Sections 69 to 78  of the Trade Marks Act, 1999. There is a system in place to ensure that the provisions are not misused. As it is considered as a trademark, it enjoys certain rights. Therefore, I am not sure as to how it will lead to denial of control over the certification standards.

 ii) Formalities associated with trademark

The report is critical of formalities associated with trademark. It states as follows: ‘Nations that impose formalities for documents used to apply for, maintain or otherwise protect trademark rights impose significant time and monetary burdens on trademark owners. There is no evidence that such requirements improve in any way the reliability of information used in trademark filings or contentious proceedings.’ The following formalities are noted:

• For filing trademark applications :    power of attorney; notarized affidavit of use, if applicable
• For filing trademark maintenance :   power of attorney
• For filing assignments of trademark applications or registrations  :   notarized deed of assignment; power of attorney from assignee; for registered marks, notarized affidavit of no legal proceedings
• For filing opposition proceedings :   power of attorney
• For filing invalidation or cancellation proceedings :   if before the Trade Marks Office, a power of attorney is sufficient; if before the Intellectual Property Appellate Tribunal, a cancellation action can only be filed if it is supported with all relevant documentation including a Vakalatnama (incorporating the signatures of all the lawyers of the firm and the opponent)
• For filing trademark infringement, passing off or unfair competition litigation :   power of attorney

Comments: Unnecessary formalities are, of course, obfuscating. However, formalities cannot be done away with at the cost of compromising the integrity of the system. For the following reasons, I am of the view that the report hasn’t properly understood the Indian system. Further, it highlights so-called problems without offering any solution:

Relevance of Power of Attorney: Power of Attorney enables one to act on behalf of another. The Contract Act, 1872 and the Power of Attorneys Act, 1882 are relevant laws. Having a power of attorney can be equated to a principal – agent relationship. When an agent acts under the express or implied authority, the agent binds the principal. Trademark is a property. When somebody else files an application for registration, maintenance, assignment, filing invalidation or cancellation proceedings etc, one is acting on behalf of somebody in a property matter. As one acts on behalf of another and legally binds the other, power of attorney is a legal necessity in such situations.

Relevance of Notary: Notarised affidavits, notarized deeds etc are required in some trademark procedures. Notaries are appointed under Notaries Act, 1952. A notarial act is not a mechanical act. Notarisation gives affidavits and deeds a certain degree of sanctity especially from the perspective of evidence law. India is not the only country to use the mode of notarization to authenticate documents.

Filing Vakalatnama: It is apparent that the report has not understood the legal status of trademark office and IPAB. While trademark office is an administrative body, the IPAB is a tribunal (quasi judicial body). When one appears before a quasi-judicial body like IPAB in a proceeding, the Indian system demands the filing of Vakkalath (a document signed by the party to the proceeding which authorizes the concerned lawyer to appear on behalf of that party). I do not understand as to how that can be considered as an unnecessary formality.

[Please note that the IPAB has two key functions: i) deciding appeals from the Indian Patent and Trademark Office; and ii) determining the validity or otherwise of granted patents and trademarks. It cannot decide on trademark infringement (or any IP infringement for that matter), passing off or unfair competition. Such matters can only be agitated before courts. And filing a vakkalath is a sine qua non. IPAB’s jurisdictional purview is limited to two IP categories, namely, patents and trademarks. It does not extend to others, namely, copyright, industrial designs, trade secrets, geographical indications etc.]

Madrid Protocol: India is now a party to the Madrid Protocol. The report is, however, critical of the fact that subsequent designations can be done only with regard to registrations obtained post-08 July 2013. The report notes that, ‘these practices necessitate the filing of either national applications in the affected countries or a new international application in order to obtain a registration through the Protocol in these countries, thereby defeating some of the benefits of using the Protocol.’

Comments: The report has highlighted a problem without offering a convincing solution. If subsequent designations can be done even with regard to registrations before 08 July 2013 (as the Report suggests), what will happen to trademarks already registered in India before this deadline which may conflict with those international registrations? That will open up a pandora’s box.  The report is silent on this.

Image from here

We’re pleased to bring to you an incisive guest post by Rahul Bajaj, arguing that it is not only wise for the Government to use the patent law flexibilities to ensure accessibility to medical devices required to combat COVID-19, but also mandated by the fundamental right to health guaranteed under the Constitution of India. It also reflects on the role that the courts can play in this regard.

Rahul, a former fellow at SpicyIP, is an MPhil in Law candidate (Rhodes Scholar) at the University of Oxford. He is studying how the right to health can be used to make patented medicines more affordable in India.

Invoking Fundamental Right to Health to Push Govt to Use Patent Law Levers

Rahul Bajaj

In his incisive post on Thursday, Prashant emphasized the need for India to explore use of the flexibilities set forth in Indian patent law to deal with the COVID-19 crisis. More specifically, Prashant’s analysis brings to light two important facts. First, the tools that are central to the COVID-19 medical response, such as respirator masks, hazmat suits and ventilators are covered by patents. Second, owing to a number of reasons, these patents will thwart the low-cost widespread availability of these medical devices in India.

Against this backdrop, Prashant explores 3 possible avenues that the Government should consider using to puncture the patents at issue. These are:

1. The Central Government’s power to declare a national emergency under section 92 of the Patents Act and thereby pave the path for compulsory licenses to be issued by the Controller General of Patents to any person interested;
2. Its power under section 100 to authorize a third party to use the patent on payment of adequate remuneration to the patentee; and
3. Its power to acquire the patents under section 102.

In this post, I would like to make the following argument. It is no longer res integra that the right to health is part of Article 21 of the Constitution. Therefore, courts can draw on the right to health (RtH) as a resource to nudge the Central Government to consider using these levers and, if the government chooses not to use them, the court is empowered to ask it to furnish reasons for its inaction.

RtH and Patent Law Levers

In international law, the RtH has been recognized as giving rise to 3 sets of obligations on every nation: the obligation to respect, protect and fulfill the right. The last two dimensions of the right are very crucial for the purpose of this article. In its General Comment 14, the ICESCR Committee noted: “This category includes such omissions as the failure to regulate the activities of individuals, groups or corporations so as to prevent them from violating the right to health of others.” [para 51].

As regards the duty to fulfill, the Committee states: “The obligation to fulfil (facilitate) requires States inter alia to take positive measures that enable and assist individuals and communities to enjoy the right to health. States parties are also obliged to fulfil (provide) a specific right contained in the Covenant when individuals or a group are unable, for reasons beyond their control, to realize that right themselves by the means at their disposal.” [para 37].

It is clear that, for those currently suffering from COVID-19 as well as those at risk, access to these medical devices is crucial for their RtH to be upheld. This being so, the duty to protect requires that India take measures to use the above language, to regulate the patentees at issue, in order to prevent them from infringing people’s RtH by pricing their products beyond their reach. Further, the duty to fulfill requires that positive measures be taken to facilitate the enjoyment of the RtH. This assertion is rooted in the fact that patents are a barrier beyond the control of individuals that is thwarting the realization of their RtH.

This tripartite formulation was endorsed by Justice Chandrachud in his concurring opinion in the Navtej Johar judgment [para 421]. It was also endorsed by the Delhi High Court in the Mohd. Ahmed judgment [para 55].

In Navtej Johar, Justice Chandrachud further held:

“Article 21 does not impose upon the State only negative obligations not to act in such a way as to interfere with the right to health. This Court also has the power to impose positive obligations upon the State to take measures to provide adequate resources or access to treatment facilities to secure effective enjoyment of the right to health.” [para 430].

Using the above framing, it is clear that access to respirator masks, hazmat suits, ventilators, etc., is essential to ensure the effective enjoyment of the RtH. As a result, it stands to reason that the court has the power to urge the government to consider using patent law levers to ensure the attenuation of the barriers that are thwarting the effective enjoyment of the RtH in this context.

To be sure, Indian courts have largely been reticent to impose positive obligations on the state under Article 21 i.e. obligations not already found in an existing law or policy. Support for this assertion can be found in this article by Madhav Khosla and this conversation between Justice Muralidhar and Professor Sandra Fredman. Even so, the use of the RtH to nudge the Government to use the public health levers in Indian patent law would not run counter to this approach adopted by Indian courts. This is for two reasons:

First, as Prashant notes in the concluding para of his post, these levers were statutorily engrafted by Parliament in the Patents Act, premised on the clear recognition that they had to be used in the appropriate fact pattern. Put simply, this was Parliament’s answer to the question of what should be done when a patent is found to undermine public health. As Khosla’s close analysis of the Supreme Court’s RtH jurisprudence makes clear, whenever the Government undertakes an obligation, the Court is willing to hold it to account for fulfilling its commitment. While Khosla’s analysis is in the context of executive policies, I see no reason why the same rationale would not apply to statutory obligations.

Second, this mode of nudging appears to be a fairly common practice in Indian courts. By way of illustration, a few weeks ago, when confronted with a case on the menace of drunken driving, the Madras High Court exhorted the police and other authorities to perform their statutory obligations under the Motor Vehicles Act and the Indian Penal Code to take appropriate punitive and remedial action. Similarly, in the order issued by Justice Muralidhar in the Harsh Mander case in the context of the recent riots in Delhi, the police was directed to discharge its statutory obligation to register FIRs for hate speech and to explain its decision to the Court.

In sum, the use of the levers Prashant outlines is not merely wise. It is mandated by the constitutionally guaranteed RtH. By framing the issue in these terms, Indian courts can ensure that the Government is held to account for its actions in responding to the barriers posed by patents in ensuring the affordability and availability of the medical devices that are at the heart of the COVID-19 medical response.

Please click here to view other COVID-19 related posts on SpicyIP and leave a comment.

This is the second and last post covering submissions with respect to trademark. While making comments, I have relied on inputs provided by various practising lawyers based out of Delhi and other parts of India.

Court Proceedings: The Report notes that, ‘it may require at least two-to-three years for court proceedings to be decided, sometimes longer (up to seven years), particularly in courts other than the Delhi High Court. The Commercial Courts Act, which came into effect in October, 2015, prescribes mandatory timelines that are intended to reduce the pendency of lawsuits, to one to-two years. Reports are that the effects and impact of the Commercial Courts Act can be clearly seen in the speed of disposal of intellectual property disputes……The increased acceptance of “summary judgments” across several commercial courts in India has also led to increased efficiency. The Delhi High Court remains at the forefront of the campaign to ensure that commercial disputes are decided expeditiously. However, where Defendants raise a credible defense, requiring trial, cases do take an average of two to three years.’

Comments: Last year, the Vidhi Centre for Law and Policy released a report on the functioning of Commercial Courts – if one goes by the Vidhi report, the Commercial Courts Act is followed more in breach than in practice. The report, through an empirical analysis of 450 cases from the jurisdictions of Delhi, Bombay and Vadodara, makes some interesting observations (for instance, how the provisions of case management hearing and summary judgment are hardly followed). I don’t know as to what extent the situation has changed on the ground. I have received mixed responses from lawyers based out of Delhi and other parts of India. While some lawyers agree to some extent, some lawyers don’t. Whatever be the reality, it is a fact that India does not have a vibrant performance evaluation framework. So, at this juncture, I can only look at this report with a certain degree of apprehension.

Number of hearings: The report also notes that disputes pertaining to trademarks (particularly counterfeiting) may be decided and decreed with only one or two hearings.

Comment: From a practical perspective, deciding and decreeing a case in one hearing is impossible (since summons will have to be served).

Opposition proceedings: The report notes that the proceedings, particularly ones filed more than three years ago, may take seven years or more before a decision is rendered. The report is forthcoming on Trademark Rules, 2017. It states that the opposition proceedings (involving serving of oppositions and counter statements, issue of abandonment orders) are faster now. However, there are considerable delays with regard to hearings on substantive issues.

Comments: There is a near-consensus amongst practising lawyers on this aspect. Statements are now served through electronic means, mostly on the same day itself.

Cancellation proceedings: The report states that the cancellation proceedings take approximately five-to-seven years (or more) before decisions are rendered. Cancellation proceedings instituted specifically before the Intellectual Property Appellate Board take somewhat less time, approximately three to- five years from filing to the rendering of a decision.

Comments: Practising lawyers agree with the first statement. But as far as the latter statement with regard to IPAB is concerned, the estimated timeline is two to three years (and not three to five years).

[There exist some issues with regard to the appointment of IPAB chairman. These issues did affect the functioning of IPAB. A detailed discussion is beyond the scope of this post. SpicyIP has covered it here.]

Grant of injunctions: The report acknowledges the grant of injunctions in ‘favor of brand owners at the ex parte as well as the interim stage of disputes, thereby ensuring that further infringement of their rights does not occur while the lawsuit proceeds through different stages.’ The report highlights this aspect as against the administrative and judicial delays.

Comments: I agree with the factual part of this report (even though I disagree with the entropic character of injunction-jurisprudence in India. Proceedings for interim injunctions are conducted as mini-trials in India. Owing to systemic delays, “temporary” in the Indian context may turn out to be quite baffling when compared to other jurisdictions. A discussion on this aspect is beyond the scope of this post. [For more on injunction jurisprudence, click here and here. The first link refers to an article co-authored by Shamnad, Jay Sanklecha and Prakruthi Gowda. The latter is a link to NLU Delhi student journal. It contains an insightful article written by Aditya Swarup – ‘The prima facie standard for interim injunctions in India’.]

Training of judges and specialized benches: The following parts of the report are quite interesting: ‘Other than on the Delhi High Court, and to some extent, the High Courts of Bombay, Madras and Calcutta, trial judges generally lack training and experience in handling trademark infringement cases. However, the Judiciary has undertaken several initiatives to provide training and special education to trial court judges on managing and deciding intellectual property disputes in accordance with principles of law. The efficiency of the judiciary’s handling of trademark matters appears to be continuing to improve, and at a rapid pace. Moreover, the Commercial Courts Act mandates the creation of specialized benches in every lower court dedicated to the adjudication of, inter alia, intellectual property disputes.’

Comments: The report is quite positive and optimistic on the quality of justice delivery system. However, I will take it with a pinch of salt. Judicial training is, unfortunately, not an area which has been given the adequate attention. For instance, the Commercial Courts Act talks about training of judges. But it places the onus on respective state governments (without any audit or review at regular intervals). It is not difficult for anybody familiar with Indian system to predict the outcome of this provision.

The quality of justice delivery system in each state in India varies in accordance with the socio-economic-political status of respective states. For more on extant state of affairs of Indian judiciary, please go through Nick Robinson’s scholarly work available here.

The report is not clear on law as well. The Commercial Courts Act does not mandate specialized benches in every lower court for adjudicating IP disputes. It envisages the creation of a framework which is dedicated to the adjudication of commercial disputes (which entail IP disputes). But the system is not designed in a way to instill IP expertise. A detailed discussion is beyond the scope of this post. But for more details and analysis, please go through the chapter authored by Shamnad which is available here.

Seizure of counterfeit goods: The report notes the near impossibility in obtaining quick seizures of counterfeit goods through a criminal action. Section 115(4) of the Trademark Act of 1999 provides that no police officer may search and seize goods unless he or she has first obtained an opinion of the Registrar of Trademarks that the goods at issue are counterfeit. From a practical perspective, it takes time (up to ten days) to obtain the above-mentioned opinion from the Registrar. By then, the spurious goods would have disappeared. Section 115 also provides that no one below the rank of Deputy Superintendent of Police may effect a seizure of counterfeit goods. This may cause practical delays as well. The report notes that the only remedy is to file a civil suit, praying for Anton Pillor order (i.e an order that requires the defendant to allow the petitioner to enter the defendant’s premises for collection of evidence)

Comments: The practising lawyers agree with this observation. However, from a practical perspective, they invoke section 156(3) of the Code of Criminal Procedure, 1973. Going by this provision, the Court can pass search and seizure order without obtaining the opinion of the Registrar under section 115(4) (since such a power of the Court is not excluded by any legislation).

Concluding thoughts

The report pats the Indian system on its back on some issues when it doesn’t deserve so. Again, it criticises the Indian system on some issues when it doesnt deserve so. At the same time, the report gets it right on some issues.

I do believe that these kinds of reports highlight the need for a credible institutional audit (a 360 degree audit that entails both regulatory and judicial frameworks). Such an audit will be far more reliable and credible than reports like the instant one. However, that is possible only if quality data is available. [For instance, the Law Commission of India, in its 253rd report, has lamented the absence of judicial statistics. Any credible policy intervention can be made only when there is quality (and reliable) statistics. All these point towards much deeper, systemic weaknesses of the Indian system.]

H/T: I would like to thank various lawyers, including Latha Nair, Ridhima Sharma and Navreet Kaur, for their inputs on some of the aspects discussed here.

(This post has been authored by Bhavik Shukla, a 5th year student at NLIU, Bhopal)

Topical Highlight

Namratha covered the first (reported) coronavirus related IP dispute in India, where Hindustan Unilever (‘HUL’) took Reckitt Benckiser (‘RB’) to the Bombay HC over its allegedly disparaging handwash advertisement. She states that HUL claimed first that RB’s advertisement disparaged its soaps, second that RB had copied its earlier published advertisement, and third that RB was creating a false propaganda that washing hands with soap bars is ineffective against the virus. Subsequently, she lays down the essentials for a disparagement claim to succeed, followed by the defences against a disparagement claim, being (i) section 30(1) of the TM Act, 1999, and (ii) free speech defence under Article 19(1)(a). Examining the presence of a prima facie case against RB, she observes that if HUL’s claims were proved right, the advertisement would have a ‘detrimental effect’ against HUL’s product, thus proving the disparagement claim.

Thematic Highlights                                                                          

Prashant wrote on the possible resolution to the problems which may arise due to the lack of stockpiling of equipment to fight COVID-19 in India. He notes that it is imperative for India to develop an IP policy that tides it over the pandemic. He observes that the grant of a compulsory licence under sections 92, 100 or 102 of the Patents Act, 1970 may be viable options, but only when the technology is available to the public at reasonable prices. He notes that while exercising one of the aforementioned options, the government must be aware of the extent of ‘know-how’ it possesses in respect of that technology. As an alternative, he suggests that bulk public procurement of patented technology may be effective, failing which technology transfer may be triggered. Ultimately, he observes that the Prime Minister’s Office should seriously consider putting together a team of experts to prepare an IP policy. In conclusion, he notes that the pandemic is appropriate to grant a compulsory licence.

This was followed by a guest post by Rahul, wherein he argues that it is not only wise for the Government to use the patent law flexibilities to ensure accessibility to medical devices required to combat COVID-19, but also mandated by the fundamental right to health guaranteed under Article 21 of the Indian Constitution. He also reflects on the role that the courts can play in this regard. Drawing from the jurisprudence of the ICESCR Committee, he highlights the Indian government’s duties to protect and fulfil the health requirements of its populace. He notes that imposition of positive obligations in themselves are not contrary to patent law, as: first, the Parliament has statutorily provided for such measures in the Patents Act, and second, this mode of imposition of obligations is a common practice of the Indian courts. He concludes by stating that the use of levers of compulsory licensing are mandated by the Right to Health.

Other Posts

Latha discussed the issue of extension in deadlines in IP prosecution in light of the COVID-19 outbreak. She observes that though the Indian IP Office (‘IPO’) has granted adjournment of hearings, it has not yet granted extensions of deadlines for filings in IP prosecution. Further, she mentions two notifications of the IPO: first, relating to the cancellation of all Video Conferences scheduled up to March 31 in the Patent Offices; and second, relating to the request for extension of time for submission of documents related to trademark applications. She notes that the second notification may not have a legal standing despite invocation of section 131 of the TM Act, 1999. Finally, she notes the issues relating to signature and stamping of documents and waiver of fees for extension of deadlines, and hopes that the IPO will provide a resolution to the various issues arising in light of the COVID-19 lockdown.

Swaraj covered the various relevant IP issues in the wake of the COVID-19 pandemic. First, he notes that there are several initiatives for an open access to ‘information, research and data’ concerning the virus. However, he emphatically urges for a movement towards a more ‘sustainable’ and ‘equitable’ publishing model for academic writing. Second, he mentions that entities have access to culture possible in such testing times, before suggesting that even libraries may be propelled to follow suit in providing such access. He also wonders if there has been a rise in Netflix subscriptions/ piracy rates, while questioning the ‘underuse’ of copyright exceptions for benefit of persons with disabilities. Third, he discusses various developments in the fileld of patents, where he observes that Israel has granted a compulsory licence to import a generic version of the HIV/AIDS drug, Kaletra. He wonders if the first world would still view compulsory licensing in an adverse light after realizing the impact of the pandemic. Subsequently, he questions the implications of the U.S.’s policy on other countries in such public health crisis while citing Gilead’s applications for Remdesivir. Last, he notes that drug development models can potentially change in light of the pandemic, and it may be possible that R&D price de-linkage may finally start to gain momentum.

In a two-part post, Mathews discussed the main points of the ‘2019 Global Trademark Report Card’ (‘Report’) by the Trademark Working Group. In the first post, Mathews notes that he is unsure of how the procedure for registration of certification marks may lead to loss of control over its certification in India; and that legal formalities cannot be done away with entirely, as it may prejudice the working of the system. He further discusses how the Power of Attorney, notary and vakalatnama are not an ‘unnecessary formality’ in India. Finally, he points out that the report fails to offer a ‘convincing’ solution to the problem of subsequent designations under the Madrid Protocol in India.

In the second post, Mathews states that he is apprehensive of the successful working of the Commercial Courts Act in India, as claimed by the Report. He subsequently deals with the points of ‘number of hearings’, ‘opposition proceedings’ and ‘cancellation proceedings’. Further, he notes that the ‘temporary’ grant of injunctions in India subsist for a long time, due to the systemic delays in the system. Though the Report offers quite an optimistic view on training of judges and specialized benches, he observes that judicial training has not been given enough attention, and the quality of justice delivery varies across India. He notes that the lawyers agree with the Report’s finding that seizure of counterfeit goods involves considerable delays. In conclusion, he notes that there is a need for a ‘credible institutional audit’ to correctly capture issues in the Indian context as the Report incorrectly praises/ criticizes the Indian system on certain issues.

Other Developments

Indian

Judgments

Frito-Lay North America, Inc. and Others v. Balaji Wafers Private Limited – Bombay High Court [January 21, 2020]

The Court granted an ad-interim injunction restraining the Defendant from infringing the Plaintiff No. 1’s ‘ridge design’ in its edible chips. The Court observed that the Defendant’s design was a prima facie imitation of the Plaintiffs’ registered design. In response to the Defendant’s claim that the design had been previously published elsewhere in the world, the Court noted that the Plaintiffs’ designs, applied to their chips indicated a marked distinction from the general wave-like designs of chips. The Court also noted that such distinctions could not be dismissed in small size eatables like potato chips as trivial. Accordingly, the Court observed that it could not be concluded that the Defendant had made out a case for the cancellation of the Plaintiffs’ registration. Moreover, the Court noted that the Plaintiffs had made out all the elements for the grant of an injunction in their favour.

Bayerische Motoren Werke AG v. Om Balajee Automobile (India) Private Limited – Delhi High Court [March 23, 2020]

The Court granted an ad interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “BMW” by using a deceptively similar mark “DMW” in respect of e-rickshaws. In arriving at this decision, the Court noted that there was a clear visual and phonetic resemblance between the marks of the Parties and the Defendant had adopted the essential features of the Plaintiff’s mark. Furthermore, the Court observed that the Defendant’s adoption of the mark “DMW” was dishonest and was with an intent to ride upon the Plaintiff’s goodwill and reputation.

Brilliant Public School Society and Another v. Brilliant Public School Sitamarhi – Chattisgarh High Court [March 23, 2020]

The dispute between the Parties arose on account of the Respondent’s alleged infringement and passing off of the Appellants’ mark “BRILLIANT PUBLIC SCHOOL” by using an identical mark in respect of providing educational services. The Trial Court refused the grant of injunction to the Appellants on the ground that the word “BRILLIANT” is generic in nature, and that the Appellants had failed to establish the elements for the grant of an injunction. The Court set aside the decision of the Trial Court, and noted that there was no evidence before it to declare that the mark “BRILLIANT” was used by large number of institutions in the country or abroad. Moreover, the Court observed that the Appellants were the prior user of the mark and had been successful in establishing a strong case for the grant of an injunction.

News & Opinions

• K.M. Gopakumar and Prathibha Sivasubramanian from the Third World Network discuss how  patent law could pose barriers to accessibility to two potential anti-COVID-19 drugs – Remdesivir and Favipiravir – that are under patent protection in India.
• Xiaomi patents new mask in India with improved fit and protection amidst the COVID-19 pandemic.
• Johns Hopkins University says that it didn’t authorize use of its logo on a report titled ‘Covid19 for India Updates’ which claimed community transmission to have started in India in early March.
• Interim orders passed by various courts have been automatically extended in wake of the lockdown.
• Despite COVID-19, patent publications and grants increase at the Indian Patent Office, but there has been a 61% decrease in trademark examinations over the last week.
• Attorney General KK Venugopal creates and provides access to his antiquarian book collection of 591 books; says they are not protected by copyright in India.
• The Indian Performing Right Society Limited (IPRS) declares an Emergency Relief Package to support around 3150 members amidst the COVID-19 pandemic.

International

• China refuses registration of coronavirus related trademark applications under the provision that prevents registration of signs which are ‘detrimental to socialist ethics or customs, or [have] other unwholesome influences’.
• SCOTUS holds that states are immune from copyright suits.
• AbbVie gives up patent rights to HIV drug Kaletra amid COVID-19 tests.
• Relecura makes patent innovation research platform freely available to researchers in light of the COVID-19 pandemic.
• South Korea launches a ‘patent information navigation’ system to provide an accurate information on the latest inventions and treatments related to the COVID-19 pandemic.
• BeyondSpring Inc., a biopharmaceutical company, submitted its US patent application for BPI-002, for ‘methods of treating viral infections, including COVID-19’.
• The Chaoyang District Market Supervision Bureau fines Beijing Yijie Shunda International Intellectual Property Agency Co. Ltd., 100,000 RMB for filing malicious marks related to the COVID-19 pandemic.
• Numerous scientists and lawyers start the ‘Open COVID Pledge’ to boost cooperation and make IP widely available to end the COVID-19 pandemic.
• US District Court for the Southern District of New York rules that videogame makers are free to use NBA stars’ tattoos.
• CJEU hold that trademark owners can seek compensation for infringement which took place before cancellation of their marks due to non-use.
• The Coronavirus Aid, Relief and Economic Security Act, passed by the Senate in the U.S. grants ‘emergency relief authority’ to the USPTO Director and the Register of Copyrights.
• A piece on Medicines Law & Policy blog argues that there is an urgent need for global collaboration, access to developmets and affordability of new medical technologies.
• A piece on IPWatchDog discusses how TikTok used blockchain to defeat copyright infringement.
• A piece in the EFF argues that the U.S. government should use its statutory authority under 28 U.S.C. §1498 to issue compulsory licences on patents that hinder access to existing technologies and development of new technologies to benefit public health.
• A piece in the National Law Review argues that a vaccine for COVID-19 may well be the newest bargaining chip in a trade war between the U.S. and China.
• A piece in the Bloomberg Opinion argues that patents must take a backseat in the fight against the pandemic, as it touted the pandemic to be ‘extraordinary circumstances’ justifying such a step.

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A Single Judge of the Bombay High Court recently passed an order in the case of Zee Entertainment Enterprises v. Ameya Vinod Khopkar & Ors. The case concerned an allegation of copyright infringement and passing off in respect of the film ‘De Dhakka’. The Plaintiff had sought a permanent as well as an ad-interim injunction restraining the Defendants from producing a sequel of the film under the title ‘De Dhakka 2’. The Court refused to grant an ad-interim injunction, holding that the assignment deed, which had assigned the rights of the original film to the Plaintiff, prima facie did not transfer them the right to make a sequel or a prequel. It also rejected the claim in respect of the film title, reiterating that the title of a work is not copyrightable and also noting that there was no case for passing off as the impugned film being a sequel could not be passed off as the original film.

Background

Zee Entertainment Enterprises Limited (ZEE) approached the Bombay High Court seeking a permanent and an ad-interim injunction against four defendants from releasing De Dhakka 2 which they claimed was evidently a sequel to the original film, De Dhakka, over which they had rights. The defendants included Ameya Vinod Khopar and another producer (defendants No. 1 and No.2) and Satya Films (defendant No. 4, owned by defendant No. 3) who were the producers of the original film, who had then assigned their rights to ZEE. The dispute was particularly concerned with the copyright in the underlying literary work including title, characters, script and dialogues in De Dhaka, and the trademark over the original film title, which the Plaintiff claimed was transferred to them through an Assignment Deed and hence the Defendants had no right to make De Dhaka 2 using the same.

ZEE relied on a Deed of Assignment that was entered into with Satya Films back in 2008 to establish that they had rights over any future works concerning De Dhakka. While the 2008 Assignment Deed transferred ‘Negative rights’ over De Dhakka, the Plaintiff relied on the phrase “Negative rights or any other rights that may be discovered or come in the future” to make their claim over De Dhakka 2. It was argued that if the Assignment Deed is read in its entirety and taken as a whole, the Plaintiff received all rights concerning the film and future works.

The Defendants used the same argument in favour of reading the Assignment Deed as a whole and in its entirety to arrive at the diametrically opposite conclusion that ZEE was not given any right over the prequel or sequel of the film.

The Court’s Reasoning

To resolve this dispute, Justice Colabawalla scrutinized the language of the Assignment Deed and relied on the precedent set in Narendra Hirawat & Co. v. M/s Alumbra Entertainment & Media Pvt. Ltd & Ors to arrive at a decision that went in favor of the Defendants. This judgment holds that, since the words ‘sequel rights’ appear nowhere in the Assignment Deed it cannot be concluded that the Defendants had assigned to the Plaintiff a right in the sequel too. Also, since the agreement was specifically for transferring the ‘Negative Rights’ of De Dhakka, it cannot be concluded that the Defendants assigned or even intended to assign more rights than those explicitly mentioned in the Assignment Deed. Further, the judge also relied on the claim made by the Defendants that De Dhakka 2 has a completely different script, different dialogues, different concept, different characters and different locations and different music. Citing these reasons after looking into the language of the Deed, the judge concluded that there was no prima facie case for granting an injunction.

The Bombay High Court has created for itself a tradition in arriving at cogent decisions for copyright infringement claims regarding films (more examples here and here). In line with this tradition, the current judgment too takes into consideration the language of the Assignment Deed, its intention to transfer rights and commercial interests that may be affected by its decision.

What the Assignment Deed Says?

The transfer of ‘Negative rights’ in the film De Dhakka is covered under clause 3 of the Assignment Deed and reads –

The ASSIGNOR (Satya Films) declares and undertakes that he shall not hereafter grant or in any way transfer the said Negative rights or any other rights that may be discovered or come in future of the said PROGRAMME (De Dhakka) or any part thereof to any other person, party, company or organization. (Emphasis mine)

Here ‘Negative rights’ refer to the transfer of ownership rights in the film negatives of De Dhakka.

And clause 5(a) of the Deed stipulates that –

the ASSIGNEE (ZEE) has the right to distribute, sell, use, exploit the same (Negative rights of De Dhaka) for commercial/non-commercial and other purposes in part of full…In short, the ASSIGNEE shall/may use the said PROGRAMME for the said purpose in any manner whatsoever for exploiting the said rights of the said PROGRAMME as is annexed in SCHEDULES (I & II).

Reading ‘any other rights that may be discovered or come in future’ exclusively can possibly lead to the conclusion that even the rights to sequels is being transferred by the Defendant. Further, this particular clause is also indicative of bad drafting that has caused the present confusion over the rights. The assignment of rights that may be discovered in the future is overwhelmingly vague and the Deed can be voided for vagueness under Section 29 of the Indian Contract Act. However, the entirety of the Assignment Deed pertains the ‘Negative rights’ of De Dhakka and hence any future work must be understood to mean works concerning only the original film, which can include remakes, using the film’s music and dialogues etc. Future works cannot be extended to mean sequels or prequels unless it is explicitly mentioned so in the Assignment Deed as it would simply be beyond the terms of the agreement.

The precedent set in Narendra Hirawat, which was used by J. Colabawalla, also focused on the conspicuous absence of any mention pertaining ‘sequels’ regarding the film Sarkar in its Assignment Deed to arrive at the conclusion that the assigned right to remake a film does not include a sequel. Similarly, De Dhakka’s Assignment Deed also makes no mention of a sequel. Given this absence, ZEE cannot rightfully claim that they have rights over the sequel to De Dhakka, which was never assigned to them in the first place.

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This post analyses whether the Indian Copyright Act, 1957 (“the Act”) permits sub-licensing by a licencee. The inspiration for this post is my frequent involvement with advice on the IP components in corporate deals, where there is a usual clause about the licencee’s ‘right to sub-license’ copyright granted to the licencee. It is not rare for the licencee to insist that the ‘right to sub-license’ exists under the Act and that it is a ‘matter of interpretation’ of the provisions of the Act. But is there such a right to sub-license under the Act?

Relevant provisions

The relevant provisions of the Act involved in addressing this issue are Sections 30, 30A and 19(1) of the Act. I reproduce them below in that order:

“30. Licences by owners of copyright.-

The owner of the copyright in any existing work or the prospective owner of the copyright in any future work may grant any interest in the right by licence in writing by him or by his duly authorised agent:

Provided that in the case of a licence relating to copyright in any future work, the licence shall take effect only when the work comes into existence.

Explanation. Where a person to whom a licence relating to copyright in any future work is granted under this section dies before the work comes into existence, his legal representatives shall, in the absence of any provision to the contrary in the licence, be entitled to the benefit of the licence.”

“30A. Application of section 19

The provisions of section 19 shall, with any necessary adaptations and modifications, apply in relation to a licence under section 30 as they apply in relation to assignment of copyright in a work.”

“19. Mode of assignment

(1) No assignment of the copyright in any work shall be valid unless it is in writing signed by the assignor or by his duly authorised agent.”

Read together, these sections would indicate that, for the purposes of following the modalities of granting a licence, Sections 30 and 30A of the Act are to be read with Section 19 thereof. The prescriptions of Section 19(1) are very clear and are replicated in Section 30 (see the underlined parts in the quoted sections above). Under the same, a licence of the copyright in any work would be valid only if it is in writing signed by the assignor or his duly authorized agent. When read with Section 30A, the reference to ‘assignor’ in that subsection is to be replaced by ‘licensor’.

Who is a ‘duly authorized agent’?

Often the argument of a licencee to justify a clause on sub-licensing is that it is an agent of the licensor. I believe that this cannot be the case for two reasons.

First, the definition of “agent” would have to examined to analyse this. The terms “agent” and “principal” are defined under Section 182 of the Indian Contract Act, 1872 as under:

“An agent is a person employed to do any act for another, or to represent another in dealing with third persons. The person for whom such act is done, or who is so represented, is called the principal.”

The Delhi High Court while interpreting the term “agency” has held as under in Poona Bottling v. Union of India (1981):

“Agency is a relationship that exists between two persons when one called “the agent” is considered in law to represent the other, called the ‘principal’ in such a way as to be able to affect the principal’s legal position in respect of strangers to the relationship by the making of contracts or the disposition of property.”

Unlike an agent who represents his principal, a licencee cannot represent the licensor. Also, unlike an agency agreement, a licence agreement does not alter the licensor’s legal position with respect to third parties through the actions of the licencee. Specifically, a licence agreement does not bind a licensor by the acts of the licencee.

In Shakti Sugars Limited v. Union of India & State Trading Corporation of India (1980), the Delhi High Court distinguished a licencee from an agent as follows:

“Thus defendant No. 2, being legal entity, acts as an individual on its own behalf. Permission for export is given to it by Union of India: but the latter does not act as principal. It is in the same manner in which any natural person or individual is authorised by the Union of India to export a commodity out of India. In that case that individual does not become agent of Union of India but is merely a licencee for exporting articles.”

Secondly, since the prescriptions of Section 19(1) are applicable to Section 30 by virtue of the language in Section 30A, the argument that a licencee is licensor’s agent is a faulty argument. In other words, Section 19(1) prescribes that an assignment of copyright in any work would be valid only if it is in writing signed by the assignor or by his duly authorised agent. In the context of a licence, Section 30A says that the provisions of section 19 would apply to a licence with any necessary adaptations and modifications as they apply in relation to assignment of copyright in a work. Sections 30 and 19 (read with Section 30A) of the Act do not include the words “or by a licencee” or any appropriate words to grant such sub-licensing rights to a licencee. Absent such words, and since the law contemplates a different meaning to the word ‘agent’, the phrase ‘duly authorized agent’ cannot be stretched to mean a licencee.

What about exclusive licencees under the Act?

However, there is one situation where the Act may be interpreted to permit a licensee to sub-license – this is when a licence is an exclusive licence. Under Section 2(j) the Act, an “exclusive licence” is defined as a licence that confers on the licencee, or on the licencee and persons authorised by the licencee, to the exclusion of all other persons (including the owner of the copyright) any right comprised in the copyright in a work. This definition appears to confer a right to sub-license the licensed work to an exclusive licencee. However, for an exclusive licencee to claim such a right to sub-license, there must be an express clause granting such rights to the licencee in the agreement.

The CoViD-19 pandemic may well be humanity’s biggest collective challenge in a post-globalisation era. In the midst of this global emergency, the artificial scarcity produced by international and domestic intellectual property laws and norms is revealing itself to be a scourge to public health systems around the world – from restraining drug research and development to denying access to medical devices. The responses of various stakeholders will certainly have an immediate impact on CoViD-19 related public health responses, but its effects could also mark fundamental changes in the domain of patents and copyright law.

In this post, I cover some of the recent developments towards creating voluntary arrangements for improved access to CoViD-19 related IP.

Patent Pools and Pledges

Several strategies for increasing the availability of healthcare related patents have already been spurred into action in the last few months. The importance of compulsory licensing as a regulatory response to the unavailability of medical devices and pharmaceuticals, in particular, has already been highlighted on this blog by Prashant and Swaraj.

Apart from compulsory licensing and regulatory responses to the availability of patents and copyrights, it is also worth highlighting efforts to improve coordinated responses and voluntary approaches towards countering ‘patent thickets’ and protracted negotiations for the use of patented or copyrighted technologies in the midst of this emergency. Navigating multiple patent rights can potentially hamper the development of responses to CoViD-19, and cooperative mechanisms to facilitate the exchanges of knowledge and IP are crucial to develop at this point. Moreover, compulsory licensing procedures, as crucial as they are, need to meet significant thresholds and standards before being enforced, which thresholds would further pose barriers to public health responses.

Recognising this, a few important mechanisms have been proposed across the world for ensuring the ‘openness’ of IP for tackling CoViD-19.

1. Open Covid Pledge – A group of US scholars and scientists have created a template ‘pledge’ for IP holders to invoke for licensing their intellectual property portfolios. The relevant part of the patent pledge reads as follows:

“The Pledgor grants to every person and entity that wishes to accept it, a non-exclusive, royalty-free, worldwide, fully paid-up license to fully use, practice and exploit all patent, copyright and other intellectual and industrial property rights (other than trademarks and trade secrets) that we have the right to license (the “Licensed IP”), for the sole purpose of ending the “COVID-19 Pandemic” (as defined by the World Health Organization, “WHO”) and minimizing the impact of the disease, including without limitation the diagnosis, prevention, containment, and treatment of the COVID-19 Pandemic.”

The ‘pledge’ is essentially a royalty-free patent license available for any entity to adopt and adapt, in order to increase the availability of protected IP for the purpose of ending or minimising the impact of CoViD-19. The pledge additionally contains a covenant not to sue for ‘regulatory exclusivity’, in a bid to include data exclusivity claims within the pledge. Finally, the pledge also includes a defensive licensing covenant – a pledge which automatically suspends the license if the licensee attempts to assert any intellectual property right against the pledgor.

Importantly, it differs from ‘open’ or (patent/copy)left licenses which would require any IP built from the licensed IP to be licensed on similar terms. Further, the license is time-limited, will revoke from one year after the WHO declares the CoViD-19 pandemic to have ended. This raises the question about the incorporation of licensed IP into products which may be used beyond the license term and what the effects of continued use or sale of such products might be for the licensee.

2. Costa Rica Proposes Emergency Technology Intellectual Property Pool – The Government of Costa Rica has asked the World Health Organisation to establish a glob of IPR and related rights for battling the CoViD-19 pandemic. According to the submission by the President and Minister of Health, such a rights pool “should include existing and future rights in patented inventions and designs, as well rights in regulatory test data, know-how, cell lines, copyrights and blueprints for manufacturing diagnostic tests, devices, drugs, or vaccines. It should provide for free access or licensing on reasonable and affordable terms, in every member country.”

The letter suggests that the WHO should initially reach out to rightsholders and governments to sign a memorandum of intent to pool IP, which can be followed up with negotiations for specific assignment and licencing arrangements. The proposal seems similar to the UN-backed Medicines Patent Pool (MPP), which already covers important retro-viral pharmaceutical developments. One important distinction between the proposed IP Pool and similar ‘patent pools’ includes the breadth of coverage, including copyrights and IP-adjacent rights such as regulatory data. InfoJustice has made a strong case for a similar ‘technology intellectual property pool’ here.

3. Chief Science Advisors ‘Request’ Publishers to Open Scientific Research – The Chief Scientific Advisors of 13 countries, including India, have requested publishers to open up scientific research published by them to PubMed, a US-Government supported repository and archive of medical scholarship and scientific research. It is unclear what effect this call has had on the publishing industry, even though Elsevier has created a CoViD-19 Info Centre. Importantly, the letter emphasises the necessity of machine-readable data formats, highlighting the role that data mining and ‘artificial intelligence’ can play in research around CoViD-19. The plea is also a testament to the continuing failure of substantially publicly funded research to be subject to open access requirements, even as public health and scientific development remains dependent on the whims of large publishing houses.

Voluntary arrangements remain important instruments to consider adopting and advocating for, however, the reliance on such voluntary grants from commercial entities also indicate the dependence of public health systems and scientific research on increasing patent monopolies and the enclosure of public health research by commercial firms. We should not wait for a pandemic to drive home the reality of how skewed and broken the world of medical and scientific research and technology is.

Please click here to view other COVID-19 related posts on SpicyIP and leave a comment.

Reuters recently reported that the Government of India has “axed” the royalties that over 45 Indian seed companies had to pay Bayer (which acquired Monsanto) under IP licensing agreements which have been the centre of a massive legal dispute between Monsanto (before its acquisition by Bayer) and Nuziveedu (one of India’s biggest seed companies) for the last five years. For years, the Bt licensing agreements have earned Monsanto a fortune. While I don’t have the figures readily at hand, a Form 27 for one of the patents covering this technology that I had accessed a few years ago had revealed that Monsanto earned Rs. 650 crores off a single patent, in year.

The axing of royalties has been directed by the Central Government under its Cotton Seed Price (Control) Order, 2015 which is issued under the Essential Commodities Act, 1955 to control not only the retail price of cotton seeds sold by Indian licensing companies, nationally, but also the “trait fee”, which is basically the licensing fee that was payable by around 45 Indian seed companies to Monsanto before it was acquired by Bayer, for its Bt technology. From what I gather, the “trait fees” was a broad phrase used to cover the licensing fee for the patented technology, “know-how” and other services that were payable under licensing agreements that Indian seed companies had entered into with Monsanto.

The axing of royalties does not come as a surprise because over the years, the Central Government has been reducing the “trait fees” payable by the Indian seed companies to Monsanto. Prior to the government’s intervention, as per a SEBI filing in 2015 by Nuziveedu, the trait fees payable to Monsanto was Rs. 168 per unit. The orders for the last three years which are accessible here, here and here have slashed the trait fees massively before negating it entirely in 2020. In 2018, it was fixed at Rs. 39, before being reduced to Rs. 20 in 2019 and finally being reduced to 0 in 2020. The retail price of the seeds has however remained almost stable reducing slightly from Rs. 740 to 730 one year but remaining stable at that price meaning that the benefits from the elimination of the “trait fee” has most certainly gone to the Indian seed companies and not the Indian farmers. So much for the claims of the Indian government and the Swadeshi Jagran Manch (the trade wing of the RSS) that they are defending the interests of farmers! Rather, this latest episode appears to be another example of protectionism, if not crony capitalism. From reports published in the Indian Express and Times of India, it appears to be quite clear that farmers are not falling for the government’s propaganda.

The Reuters report is silent on whether Bayer still has any valid patents on the technology. However even if the patents have expired, IP licensing agreements tend to also cover ‘know-how’ and trade secrets. It is one thing for the government to intervene in setting retail prices but it is unacceptable for the government to interfere in a contract that both parties have entered into voluntarily, knowing the consequences. As is usually the case with the Indian government, it rarely looks beyond the first order effects of its decisions and the effect that it may have on the future of IP licensing, across technologies, in India. In this case, the first order effects are limited to Bayer, which is not making much noise, presumably because it has vast business interests in Indian agriculture that it does not want to jeopardize.

But there were will be second order effects on future IP licensing deals with Indian companies. My guess is that most lawyers will advise IP owners to try and avoid licensing any politically sensitive technologies to Indian companies, as far as possible because of the manner in which the government can arbitrarily intervene and alter the terms of a contract under the Essential Commodities Act. IP owners will also restrict the extent to which a future licensee can work that technology without crucial inputs from the IP owner, thereby giving the latter more control. In other words, we can expect future IP licensing agreements to be a lot more restrictive, which is not necessarily a good thing for Indian industry or the Indian economy.

From a trade perspective, India’s use of price control under the Essential Commodities Act for medical devices caused the suspension of trading privileges offered by the American government under its GSP program. While the government has tried to downplay the fallout of the suspension of these trading privileges, it did make representations, along with several Indian companies, to the United States Trade Representative (USTR), seeking the restoration of the GSP trading privileges. Its written submissions, which can be accessed here, ended with the following lines:

“It is submitted that a withdrawal of the GSP benefits to India would be discriminatory and detrimental to the development, finance and trade needs of India, a vast and diverse developing country with unique challenges. We request the President of the United States to continue the GSP beneficiary status to India.”

 The issue is not really about abstract notions like “national interest”, as claimed by the RSS’s trade wing but rather a series of trade-offs between the interests of different Indian lobbies. For example, the suspension of GSP benefits, post price controls on medical devices, most certainly hurt some sectors in India. This submission by the Gem and Jewellery Export Promotion Council of India to the USTR, described how 6.1 million Indian workers would be affected by the suspension of GSP benefits. Yet there is no denying that price control on medical devices, most likely helped the middle class in India access stents and knee implants at a lower price. How do you weigh the potential employment related losses for the gems industries when compared to the benefits for the middle class, which is likely the primary consumer of medical devices? It is essentially a political choice based on the priorities of an elected government.

When it comes to agriculture, the trade-off should ideally be between farmer incomes and incentivizing companies like Bayer to make available their latest technology in India to boost agricultural productivity. The trade-off should not be between the profits of Indian seed companies and the profits of MNCs. Yet this is exactly the route chosen by the Indian government when it decided to wield price control regulations in a manner that expressly enriches Indian seed companies instead of passing on the benefits to farmers. In the process, the government has also sent out a negative signal to other technology providers in the agro space.

It remains to be seen if Bayer decides to politicize the issue by bringing in foreign government (as was done earlier by Monsanto when the US Ambassador got involved) or choose a path of quiet lobbying and new licensing strategies.

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We’re pleased to bring to you an interesting and pertinent post by our intern, Bhavik Shukla, analysing the trademark related issues thrown up by the COVID-19 pandemic. Bhavik is a 5th year student at NLIU, Bhopal.

Corona and Trademarks: Opportunistic Marketing or Unhealthy Opportunism?

Bhavik Shukla

The COVID-19 pandemic has wreaked havoc across the world, with countries constantly battling to prevent new infections and cure the existing ones. Even in such economically and socially constipated times, some people try to make the most of the situation. For example, some applications have been filed before the Registrar of Companies for names containing ‘COVID’. Similarly, news of a spike in online frauds and sale of necessities at higher prices is commonplace. Though many such corona/ COVID-19 related issues can exist (such as “I survived Covid-19” t-shirts), I shall focus primarily on trademark issues related to public health/safety in this post.

Registration of ‘Coronavirus’ and ‘COVID-19’ related marks

The recent past has seen several applicants filing trademark applications for ‘Coronavirus’ and ‘COVID’ related marks. Expectedly, there are applications which have been filed under Class 5 pertaining to medical pharmaceuticals, and veterinary products (as many of you may know, trademark applications are filed in ‘classes’ which indicate the categorization of the goods or services that the mark is being applied for – click here for full description of each class). More befuddling are applications filed under certain other classes, like the application for the mark ‘Corona Safe’ filed under Class 3 for ‘smoothing face masks’ and ‘cleaning masks for face’ in addition to ‘hand cleaners’ and other goods. Another application which seems like a poor attempt at executing a joke on the situation is for the mark ‘Corona’ under Class 9 in respect of a ‘computer anti-virus software.’ Unsurprisingly, none of the applicants have started using the marks (from what I can tell at least) and it is very possible that some of them might not even have the intention to use it in the future. China has in recent times cracked down on the malicious filing of ‘COVID-19’ trademarks through its amended law. Even though we don’t have a strict provision aimed at such marks in India, I argue below that that applications for corona/covid related trademarks will most likely be refused by the Registry under Section 9 of the Trade Marks Act, 1999 (‘Act’), which deals with absolute grounds of refusal for registration.

Potential to deceive the public

Section 9(2)(a) of the Act provides that “a mark shall not be registered as a trade mark if it is of such nature as to deceive the public or cause confusion“. This provision aims to prevent registration of marks which cause deception or confusion among the public. As of now, the best response that healthcare experts and governments have had to the virus is ‘social distancing’. In such times, when a cocktail of medicines are being tested with the hope of treating patients, it is astonishing that certain proprietors have sought registration for marks like ‘COVID-RELIEF’, ‘NOCORONA’ and ‘DHL CORONAVIRUS PREVENTIVE’.

Take for example, the mark ‘NOCORONA’ for an umbrella of goods like ‘pharmaceuticals’, ‘medical and veterinary preparation’ and ‘sanitary preparation for medicinal purposes’. An average customer using the products might very well believe that the medical preparation prevents the onset of or cures COVID-19, especially in times of abundance of misinformation about the virus’s prevention or cure. Considering that the WHO is still organising mega-trials to determine what treatments work for Corona, it is highly improbable that the goods sold under ‘NOCORONA’ or similar marks actually present a determinative cure to the virus. In that light, such marks can very well ‘deceive’ the public into believing that the products sold under them are effective, when in reality they may not actually be. However, preventive steps like the use of sanitizers are effective in the fight against COVID-19, and I shall address that argument under the next heading.

The Draft Trade Marks Manual, 2015, which offers guidance on the application of the Act, states that Section 9(2)(a) may be attracted even in cases where there is ‘misrepresentation as to the characteristics of the goods or services’. In light of the discussion above, the implied assurance of products under the marks (‘COVID-RELIEF’, ‘NOCORONA’ ‘DHL CORONAVIRUS PREVENTIVE’) fulfilling their desired objective of purging COVID-19 appears to be a misrepresentation.

Descriptive nature

Further, Section 9(1)(b) provides for refusal of registration of marks “which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service.”

Some of the marks under Class 5 brandish the use of the products being sold under them, for example ‘COVID-RELIEF’, ‘ANTI-CORONA’, ‘NOCORONA’ and ‘CORONA SAFE’. Such marks clearly fall within the wording of Section 9(1)(b) of the Act, as they are completely descriptive in nature. However, as per the proviso to Section 9(1), a descriptive mark may be eligible for registration when it has acquired distinctiveness. However, all these marks are ‘proposed to be used’ and an argument about acquired distinctiveness would not stand for the present marks.

An attempt at profiteering in times of COVID-19: Sanitizers and Food Supplements

Sanitizers, forming the backbone of the fight against the virus have been ‘out of stock’ on most mediums for the last few weeks. Although people have improvised by using surgical spirit and alum to kill the virus, there have been many cases of local manufacturers supplying fake sanitizers (eg: here, here). It is extremely saddening that there are no general standards in India for manufacture of sanitizers, unless these standards happen to be in the Indian Pharmacopeia 2018 which is accessible only on the payment of an astronomical price. The reference to the Indian Pharmacopeia is drawn from the Second Schedule of the Drugs and Cosmetics Act, 1940 which mentions standards for drugs manufactured in India. For standards not covered explicitly in the Second Schedule (like sanitizers), the heading of ‘other drugs’ refers to the Indian Pharmacopeia or Pharmacopeia of any other country. It is imperative in light of the current emergency-like situation that the government should set out standards for the manufacture of sanitizers effective to tackle COVID-19 (despite my best efforts, I could not find any such standards readily available to the public; open to correction). For example, the U.S. FDA has recently set standards for manufacture of sanitizers effective against coronavirus. Aside from the obvious benefit of having and publicizing such standards, it would also help make clear what to do with trademark applications for marks like ‘ANTI-CORONA’, ‘CORONA SANITIZER’ and ‘CORONA SAFE: ANTIVIRUS SPRAY WITH VITMAIN ‘E’’ under Class 5. Without an effective setting of standards by the government, proprietors may adopt similar marks to sell sanitizers, thereby leading to widespread misrepresentation among the public.

Additionally, an application, ‘DHL CORONAVIRUS PREVENTIVE’ mentions ‘food supplement’ in the description of goods under Class 5. This is interesting, as the product claims to ‘prevent coronavirus’. This seems problematic as it runs directly contrary to the provisions of the FSSAI Act, 2006. The FSSAI Regulations, 2016 govern such health supplements, being a term synonymously used for ‘food supplement’ by the Regulations. Accordingly, the FSSAI Act, 2006 prescribes penalty for misbranded foods which specifically cover such products which are sold with ‘false, misleading or deceptive claims’. However, using the food supplement route is a very convenient means to launch a product within a strict timeline as it steers away from the drug regulatory authorities, leading to a faster introduction in the market.

What about already registered marks? 

On the other hand, what about the existing trademarks which are similar to ‘coronavirus’ or ‘COVID-19’? Taking inspiration from Swaraj’s post, what happens if the company which manufactures ‘Corona’ beer claims that its brand is being diluted by various applications filed containing the mark ‘corona’? Prima facie, there should be no problem with goods to be offered under Class 5 as the marks concern completely different products, and a person of ordinary intelligence would not associate ‘Corona’, the mark used for beer with pharmaceuticals. Even if it is considered that an application is filed for registration of a tagline which contains the mark ‘Corona’ (similar to this), it will be very difficult to establish trademark dilution. The elements to establish trademark dilution include, first, a higher notch of identity or similarity between the two marks and second, ‘dissimilarity of goods, the claimant mark having a reputation in India, the use of the mark without due cause, resulting in detriment to it, or the defendant taking undue advantage, have to be established.’ It is difficult to ascertain any harm to the beer manufacturer through taking ‘undue advantage’ of its mark or acting to its ‘detriment’, if it strictly relates to a tagline or a guidebook pertaining to COVID-19.

Another interesting question that arises is whether the already registered marks such as ‘CORONA’, ‘CORONA REMEDIES’, ‘COVIDION’ etc. (registered in Class 5) can be cancelled for loss of distinctiveness or their potential to deceive the public, as people are now likely to associate the word ‘corona’ or ‘covid’ only with the virus and disease caused by it? Under Section 57 of the Act, a trademark registration can be cancelled on multiple grounds, the one relevant here being “entry wrongly remaining on the register”. So, one may argue that due to the change in circumstances, the mark has now lost its distinctiveness or has the potential to deceive the public and thus wrongly remains on the register. However, all the cancellation decisions till now (to the best of my research) have been based on similarity to other marks, and not independently on arising of any new circumstances. Also, although IPAB can suo motu initiate cancellation proceedings, it seems that only proprietors of similar marks (being aggrieved persons) have initiated them in most cases. It would be interesting to see if a case of cancellation of any ‘corona’ or ‘covid’ marks comes up in light of the current pandemic.

However, it is highly possible that some proprietors may decide to re-brand themselves/ their products, considering the association with a deadly virus (readers may be interested to read about the ‘COVID’ company in Arizona, the Corona village in India and the Corona mascot of the Austrian village named after Saint Corona). With regard to the proposed trademarks that may create more confusion in these currently very confusing times – it can only be hoped that better sense prevails and such indiscriminate filing of trademarks stops!

Thanks to Swaraj and Pankhuri for their invaluable inputs on this post!

Please click here to view other COVID-19 related posts on SpicyIP.

We’re pleased to bring to you an insightful post by Raunaq Kamath on the discrepancy in registration and the subsequent enforcement of generic words as domain names and trademarks. Raunaq is an attorney at Ira Law.

Generic Domain Names as Trademarks: Registrability and Enforcement

Raunaq Kamath

Domain names are a commodity, and a valuable one at that. For instance, cars.com is said to have been valued at a whopping USD 872 million. According to GoDaddy, the 5 most expensive domain names publicly reported are:
1. CarInsurance.com: USD 49.7 million
2. Insurance.com: USD 35.6 million
3. VacationRentals.com: USD 35 million
4. PrivateJet.com: USD 30.18 million
5. Voice.com: USD 30 million

Coming in at number 6 is internet.com which fetched a relatively modest USD 18 million. What is striking about these domain names, and the next twenty or so on the list, is that if one were to ignore the accompanying generic Top Level Domain (gTLD) i.e. ‘.com’, all that remains is generic words.

Internet.in domain name registration in India

The registrability of generic words as domain names in the Indian context was examined by an Arbitrator in an INDRP proceeding in 2006. The domain name in question was internet.in. The complainant was the registered proprietor of the trade mark INTERNET in class 34 and claimed that the registrant was known to capture and park thousands of ‘famous trade marks’. The arbitrator found that the domain name internet.in and the trade mark INTERNET are identical and eventually held that the registrant should not be permitted to retain this domain name. The arbitrator, however, also concluded that the complainant had failed to prove its rights in the generic word INTERNET and ordered that the domain name be taken into the custody of the .IN Registry.

In two stages of appeal, the Delhi High Court (a Single Judge followed by a Division Bench) did not substantially interfere with the order, save to find that the arbitrator did not have powers to direct the .IN Registry to take custody of the domain name, which should be struck off (see Shamnad’s post on the Single Judge’s order here). The High Court also found that the arbitrator’s conclusion that the complainant had failed to prove its own rights was an incorrect one, owing to the subsistence of a valid and unchallenged registration for the trade mark INTERNET in his favor. The domain name internet.in was eventually not transferred to the complainant as the Court was of the view that he was unable to demonstrate any actual use of the trademark INTERNET. The Court also observed that the word ‘internet’ is generic and the complainant’s trademark INTERNET is therefore a weak one which are relevant considerations to decline the request for a transfer of this domain name.

The internet.in decision tells us that while generic words have been trademarked in India, a generic word as a domain name is susceptible to cancellation, unless one can demonstrate acquired distinctiveness through use, goodwill and reputation.

Booking.com domain name registration in US

The US Supreme Court has taken this issue one step further and is examining the trade mark registrability of a domain name comprising a generic word accompanied by a gTLD, in the case of United States Patent and Trademark Office v. Booking.com. The registrant of the domain Booking.com had filed applications seeking registration of the trade mark BOOKING.COM.

The USPTO refused registration of the marks finding that BOOKING.COM is generic and, in the absence of acquired distinctiveness demonstrating a secondary meaning, the addition of a gTLD is inadequate to make a generic word i.e. booking, distinctive enough for a registration. The appellate board did not interfere with the decision.

The District Court, in appeal, however reversed these findings and opined that a secondary meaning had been acquired and the marks were therefore registrable. The USPTO was unsuccessful in an appeal to the Fourth Circuit which concurred with the District Court’s decision and the issue is now before the US Supreme Court.

The US Supreme Court was scheduled to hear oral arguments on March 16 which now stands deferred for obvious reasons. It remains to be seen whether the Court will find that the addition of a generic TLD to a generic word could potentially constitute a registrable mark and if so, in what circumstances.

Liberal registration of generic domain name as trademarks in India

The Indian Trade Marks Registry on the other hand has demonstrated limited reservations in granting registration to such marks. For one, BOOKING.COM is a registered trade mark (2298594) in India. Moreover, other marks such as INTERNET.COM (1236843), GO.COM (1236410), AA.COM (1789454), LISTEN.COM (888264), MATCH.COM (1269727), ERASER.COM (1994835), as well as more indigenous marks such as KERALA.COM (1605615), NAAM.COM (1381238), and PYAR.COM (1381239) have been granted registration. Another significant example of a liberal registration in India is the one granted for the mark .COM (1831706) itself.

In this backdrop, it emerges that the Indian Trade Marks Registry is open to grant registration to generic domain names as trade marks. However, the enforceability of these registrations is another story altogether.

The Delhi High Court was approached on 2 separate occasions by the owner of bookmyshow.com who, despite having acquired statutory rights in the trade mark BOOKMYSHOW, was unable to obtain orders restraining third parties from using bookmysport.com (see the decision here and a post on it on the blog here) and bookmyevent.com (see here). The Court was of the view that the overlapping prefix ‘BOOKMY’ was descriptive and commonly used by various players in the booking industry and therefore deemed it appropriate to deny the injunction.

Similarly, the Bombay High Court also denied injunctions sought by shaadi.com and indiaproperties.com against secondshaadi.com (see here for the decision and here for our post on it) and indiaproperty.com (see here) respectively, finding that the generic and descriptive nature of the Plaintiffs’ respective domain names meant that the slightest difference in the Defendants’ corresponding domain names was sufficient to deny an injunction.

The question remains that if the US Supreme Court does find that the trade mark BOOKING.COM is registrable, will a registration of this nature be enforceable going forward?